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SEMINAR COURSE REPORT ON LAW RELATING TO PATENT

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Objective of study

One of the most difficult issues for foreign investors doing business in developing countries
such as INDIA is how best to protect their proprietary technology from infringement.

This issue can be particularly huge, as many times, the companys technology to be protected
will be among its most valuable assets and the basis of its competitive advantage in the
market.Patents are the primary (but not the only) device by which parties identify and protect
their proprietary ownership of an invention.A somewhat simplistic definition of a patent is a
temporary, exclusive right granted to an inventor (individual or business) by the government
to prevent others from manufacturing, selling or using the invention.

Note that the definition of invention here is quite broad and encompasses all patentable
technology including mechanical inventions, processes, formulas and designs.Intellectual
property rights have come to occupy an increasingly important place in the world today. The
expression intellectual property itself connotes a string of rights available for the protection
and exploitation of technology to its maximum potential. Intellectual property law is
generally understood in two categories: industrial property which concerns patents,
trademarks, designs etc. and copyrights which concerns literary and artistic works. The major
goals of any intellectual property system are safeguarding the rights of an inventor in his
invention and facilitating economic and social growth by providing an impetus to the
advancement of science and technology.

One of the primary objectives of patent law is to promote innovation in the market place. It
works to accomplish this by granting the developers of patentable inventions an incentive in
the form of an exclusive right to use, produce and sell the invention for a period of time.

Patent law is so important because without such protection, unauthorized parties would be
free to wait for others to invest the time, energy and money necessary to develop new

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
SEMINAR COURSE REPORT ON LAW RELATING TO PATENT
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technology and then simply copy it. Therefore, patent protection helps to facilitate a return on
investment.

EXAMPLE: Suppose a company expends the time, money and effort necessary to develop an
innovative and potentially life saving surgical device. The company eventually applies for
and obtains a patent for the product. That company would be granted an exclusive right to
produce, use and sell that invention for a set period of time.

During the protection period a third party with no rights to the invention begins to produce,
use and sell the device. The patent holder may then call on a court and/or the police

to order the infringer to cease production use, and/or sale of the device and impose fines
and/or imprisonment.

Another objective of patent law is to provide greater certainty in the market by providing a
system by which to determine who holds the exclusive rights to a particular invention.

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
SEMINAR COURSE REPORT ON LAW RELATING TO PATENT
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Introduction

In India,The Indian Patents Act 1970 was implemented in 1972. It made pharmaceutical
product innovations, as well as those for food and agro-chemicals, un-patentable in India. It
allowed innovations patented elsewhere freely copied and marketed in India. Further, this Act
restricted import of finished formula, imposed high tariff rates and introduced strict price
control regulation. This Act was not beneficial to the big foreign multinational organizations
and was not in sync with the global patent system.

India being a member of WTO, it had to comply with the requirements under the TRIPS
Agreement. As such the 1970 Act was required to be amended. The requirements were that a
mailbox system be set up and Exclusive Marketing Rights (EMR) be allowed. Under the
EMR, an international company would get exclusive rights to market a product in the field of
pharmaceuticals and agricultural chemical products in the Indian market for a specified
period (5 years). The mail box system is a box which received all applications for the
patenting of pharmaceutical and agricultural chemical products. These provisions were
included in the Patents Act through 1999, 2001 and 2002 amendments. The applications in
the mail box were considered in 2005.

These amendments though far reaching, still did not bring the Indian Patents Act in full
conformity with the global intellectual property system. This conformity was introduced
through the Patents Amendment Act 2005. The main provisions of this Amendment Act are:

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
SEMINAR COURSE REPORT ON LAW RELATING TO PATENT
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1. Product Patent:

The Act extends product patent protection in all fields of technology, i.e. drugs, food and
chemicals. Earlier only process patent was allowed which limited patent rights. For example,
a process patent was awarded to the way a cure for, say cancer, is manufactured and not for
the cure. This allowed the other manufacturers to produce the same cure by some other
method and hence not violate patent rights of the original manufacturer. But now after the
2005 Amendment, patent is awarded to the way cancer cure is manufactured and to the cure
as well.

2. Compulsory Licensing:

This is a TRIPS compliant provision empowering the governments to check and control the
misuse of patents. Inspite of the existence of a patent, the govt can invoke the compulsory
license to make available the patented product to the people in case of national emergency for
public non-commercial use. The govt can also invoke compulsory licensing if it feels that the
public requirements with regard to a patented product have not been met and the product is
not available for the public at an affordable price.

3. Embedded Software:

The Act allows for patenting of embedded software

4. Other provisions:

The Act allows the patent holder to challenge the license so that he can block general
production of his drug. Pre-grant and post-grant opposition clause has been provided. The
Act also removes provisions relating to EMRs besides strengthening the provisions relating to
national security to guard against patenting abroad of dual use technologies.

Patents Act 2005 provides that following items are not patentable:

A frivolous invention or one that claims anything contrary to established natural laws .

1. An invention the use of which would be contrary to morality or injurious to public


health.
REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
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2. The mere discovery of a scientific principle or the formulation of an abstract theory.

3. The mere discovery of any new property or new use of a known substance or the mere
use of a known process , machine or apparatus unless such known substance results in
a new product or employs atleast one new reactant .

4. A substance obtained by a mere admixture resulting only in the aggregate properties


of the components thereof or a process for producing such substance.

5. The mere arrangement or rearrangement or duplication of known devices functioning


independently of one another in a known way.

6. A method or process of testing applicable during the process of manufacture


rendering the machine , apparatus or other equipment more efficient, or for the
improvement or restoration of the existing machine, apparatus or other equipment for
the improvement or control of manufacture .

7. A method of agriculture or horticulture.

8. Inventions relating to atomic energy.

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
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Historical Perspective
A patent (/ptnt/ or /petnt/) is a set of exclusive rights granted by a sovereign state to an
inventor or assignee for a limited period of time in exchange for detailed public disclosure of
an invention. An invention is a solution to a specific technological problem and is a product
or a process.[1]:17 Patents are a form of intellectual property.

The procedure for granting patents, requirements placed on the patentee, and the extent of the
exclusive rights vary widely between countries according to national laws and international
agreements. Typically, however, a granted patent application must include one or more
claims that define the invention. A patent may include many claims, each of which defines a
specific property right. These claims must meet relevant patentability requirements, such as
novelty, usefulness, and non-obviousness. The exclusive right granted to a patentee in most
countries is the right to prevent others, or at least to try to prevent others, from commercially
making, using, selling, importing, or distributing a patented invention without
permission.[2][3]

Under the World Trade Organization's (WTO) Agreement on Trade-Related Aspects of


Intellectual Property Rights, patents should be available in WTO member states for any
invention, in all fields of technology,[4] and the term of protection available should be a
minimum of twenty years.[5] Nevertheless, there are variations on what is patentable subject
matter fromDefinition[edit]

The word patent originates from the Latin patere, which means "to lay open" (i.e., to make
available for public inspection). More directly, it is a shortened version of the term letters
patent, which was a royal decree granting exclusive rights to a person, predating the modern
patent system. Similar grants included land patents, which were land grants by early state
governments in the USA, and printing patents, a precursor of modern copyright.

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
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In modern usage, the term patent usually refers to the right granted to anyone who invents
any new, useful, and non-obvious process, machine, article of manufacture, or composition of
matter. Some other types of intellectual property rights are also called patents in some
jurisdictions: industrial design rights are called design patents in the US,[6] plant breeders'
rights are sometimes called plant patents,[7] and utility models and Gebrauchsmuster are
sometimes called petty patents or innovation patents.

The additional qualification utility patent is sometimes used (primarily in the US) to
distinguish the primary meaning from these other types of patents. Particular species of
patents for inventions include biological patents, business method patents, chemical patents
and software patents.

History of patent law

The Venetian Patent Statute, issued by the Senate of Venice in 1474, and one of the earliest
statutory patent systems in the world.

Although there is some evidence that some form of patent rights was recognized in Ancient
Greece in the Greek city of Sybaris,[8][9] the first statutory patent system is generally
regarded to be the Venetian Patent Statute of 1450. Patents were systematically granted in
Venice as of 1450, where they issued a decree by which new and inventive devices had to be
communicated to the Republic in order to obtain legal protection against potential infringers.
The period of protection was 10 years.[10] These were mostly in the field of glass making.
As Venetians emigrated, they sought similar patent protection in their new homes. This led to
the diffusion of patent systems to other countries.[11]

The English patent system evolved from its early medieval origins into the first modern
patent system that recognised intellectual property in order to stimulate invention; this was
the crucial legal foundation upon which the Industrial Revolution could emerge and

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
SEMINAR COURSE REPORT ON LAW RELATING TO PATENT
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flourish.[12] By the 16th century, the English Crown would habitually abuse the granting of
letters patent for monopolies.[13] After public outcry, King James I of England (VI of
Scotland) was forced to revoke all existing monopolies and declare that they were only to be
used for "projects of new invention". This was incorporated into the Statute of Monopolies
(1624) in which Parliament restricted the Crown's power explicitly so that the King could
only issue letters patent to the inventors or introducers of original inventions for a fixed
number of years. The Statute became the foundation for later developments in patent law in
England and elsewhere.

James Puckle's 1718 early autocannon was one of the first inventions required to provide a
specification for a patent.

Important developments in patent law emerged during the 18th century through a slow
process of judicial interpretation of the law. During the reign of Queen Anne, patent
applications were required to supply a complete specification of the principles of operation of
the invention for public access.[14] Legal battles around the 1796 patent taken out by James
Watt for his steam engine, established the principles that patents could be issued for
improvements of an already existing machine and that ideas or principles without specific
practical application could also legally be patented.[15] Influenced by the philosophy of John
Locke, the granting of patents began to be viewed as a form of intellectual property right,
rather than simply the obtaining of economic privilege.

The English legal system became the foundation for patent law in countries with a common
law heritage, including the United States, New Zealand and Australia. In the Thirteen
Colonies, inventors could obtain patents through petition to a given colony's legislature. In
1641, Samuel Winslow was granted the first patent in North America by the Massachusetts
General Court for a new process for making salt.[16]

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
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U.S. patents granted, 17902010.

The modern French patent system was created during the Revolution in 1791. Patents were
granted without examination since inventor's right was considered as a natural one. Patent
costs were very high (from 500 to 1,500 francs). Importation patents protected new devices
coming from foreign countries. The patent law was revised in 1844 - patent cost was lowered
and importation patents were abolished.

The first Patent Act of the U.S. Congress was passed on April 10, 1790, titled "An Act to
promote the progress of useful Arts".[18] The first patent was granted on July 31, 1790 to
Samuel Hopkins for a method of producing potash (potassium carbonate)

Effects

A patent does not give a right to make or use or sell an invention.[19] Rather, a patent
provides, from a legal standpoint, the right to exclude others[19] from making, using, selling,
offering for sale, or importing the patented invention for the term of the patent, which is
usually 20 years from the filing date[5] subject to the payment of maintenance fees. From an
economic and practical standpoint however, a patent is better and perhaps more precisely
regarded as conferring upon its proprietor "a right to try to exclude by asserting the patent in
court", for many granted patents turn out to be invalid once their proprietors attempt to assert
them in court.[3] A patent is a limited property right the government gives inventors in
exchange for their agreement to share details of their inventions with the public. Like any
other property right, it may be sold, licensed, mortgaged, assigned or transferred, given away,
or simply abandoned.

A patent, being an exclusionary right, does not necessarily give the patent owner the right to
exploit the invention subject to the patent. For example, many inventions are improvements
of prior inventions that may still be covered by someone else's patent.[19] If an inventor
obtains a patent on improvements to an existing invention which is still under patent, they can

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
SEMINAR COURSE REPORT ON LAW RELATING TO PATENT
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only legally use the improved invention if the patent holder of the original invention gives
permission, which they may refuse.

Some countries have "working provisions" that require the invention be exploited in the
jurisdiction it covers. Consequences of not working an invention vary from one country to
another, ranging from revocation of the patent rights to the awarding of a compulsory license
awarded by the courts to a party wishing to exploit a patented invention. The patentee has the
opportunity to challenge the revocation or license, but is usually required to provide evidence
that the reasonable requirements of the public have been met by the working of invention.

Challenges

In most jurisdictions, there are ways for third parties to challenge the validity of an allowed
or issued patent at the national patent office; these are called opposition proceedings. It is also
possible to challenge the validity of a patent in court. In either case, the challenging party
tries to prove that the patent should never have been granted. There are several grounds for
challenges: the claimed subject matter is not patentable subject matter at all; the claimed
subject matter was actually not new, or was obvious to experts in the field, at the time the
application was filed; or that the some kind of fraud was committed during prosecution with
regard to listing of inventors, representations about when discoveries were made, etc. Patents
can be found to be invalid in whole or in part for any of these reasons.[20][21]

Infringement

Patent infringement

Patent infringement occurs when a third party, without authorization from the patentee,
makes, uses, or sells a patented invention. Patents, however, are enforced on a nation by
nation basis. The making of an item in China, for example, that would infringe a U.S. patent,
would not constitute infringement under US patent law unless the item were imported into the
US.[22]

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
SEMINAR COURSE REPORT ON LAW RELATING TO PATENT
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Enforcement

Patents can generally only be enforced through civil lawsuits (for example, for a U.S. patent,
by an action for patent infringement in a United States federal court), although some
countries (such as France and Austria) have criminal penalties for wanton infringement.[23]
Typically, the patent owner seeks monetary compensation for past infringement, and seeks an
injunction that prohibits the defendant from engaging in future acts of infringement. To prove
infringement, the patent owner must establish that the accused infringer practises all the
requirements of at least one of the claims of the patent. (In many jurisdictions the scope of the
patent may not be limited to what is literally stated in the claims, for example due to the
doctrine of equivalents).

An accused infringer has the right to challenge the validity of the patent allegedly being
infringed in a countersuit. A patent can be found invalid on grounds described in the relevant
patent laws, which vary between countries. Often, the grounds are a subset of requirements
for patentability in the relevant country. Although an infringer is generally free to rely on any
available ground of invalidity (such as a prior publication, for example), some countries have
sanctions to prevent the same validity questions being relitigated. An example is the UK
Certificate of contested validity.

Patent licensing agreements are contracts in which the patent owner (the licensor) agrees to
grant the licensee the right to make, use, sell, and/or import the claimed invention, usually in
return for a royalty or other compensation. It is common for companies engaged in complex
technical fields to enter into multiple license agreements associated with the production of a
single product. Moreover, it is equally common for competitors in such fields to license
patents to each other under cross-licensing agreements in order to share the benefits of using
each other's patented inventions.

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
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Ownership

In most countries, both natural persons and corporate entities may apply for a patent. In the
United States, however, only the inventor(s) may apply for a patent although it may be
assigned to a corporate entity subsequently[24] and inventors may be required to assign
inventions to their employers under an employment contract. In most European countries,
ownership of an invention may pass from the inventor to their employer by rule of law if the
invention was made in the course of the inventor's normal or specifically assigned
employment duties, where an invention might reasonably be expected to result from carrying
out those duties, or if the inventor had a special obligation to further the interests of the
employer's company.[25]

The plate of the Martin ejector seat of a military aircraft, stating that the design is covered by
multiple patents in Britain, South Africa, Canada and "others". Dbendorf Museum of
Military Aviation.

The inventors, their successors or their assignees become the proprietors of the patent when
and if it is granted. If a patent is granted to more than one proprietor, the laws of the country
in question and any agreement between the proprietors may affect the extent to which each
proprietor can exploit the patent. For example, in some countries, each proprietor may freely
license or assign their rights in the patent to another person while the law in other countries
prohibits such actions without the permission of the other proprietor(s).

The ability to assign ownership rights increases the liquidity of a patent as property. Inventors
can obtain patents and then sell them to third parties.[26] The third parties then own the
patents and have the same rights to prevent others from exploiting the claimed inventions, as
if they had originally made the inventions themselves.

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
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Governing laws

The grant and enforcement of patents are governed by national laws, and also by international
treaties, where those treaties have been given effect in national laws. Patents are granted by
national or regional patent offices.[27] A given patent is therefore only useful for protecting
an invention in the country in which that patent is granted. In other words, patent law is
territorial in nature. When a patent application is published, the invention disclosed in the
application becomes prior art and enters the public domain (if not protected by other patents)
in countries where a patent applicant does not seek protection, the application thus generally
becoming prior art against anyone (including the applicant) who might seek patent protection
for the invention in those countries.

Commonly, a nation forms a patent office with responsibility for operating that nation's
patent system, within the relevant patent laws. The patent office generally has responsibility
for the grant of patents, with infringement being the remit of national courts.

The authority for patent statutes in different countries varies. In the UK, substantive patent
law is contained in the Patents Act 1977 as amended.[28] In the United States, the
Constitution empowers Congress to make laws to "promote the Progress of Science and
useful Arts..." The laws Congress passed are codified in Title 35 of the United States Code
and created the United States Patent and Trademark Office.

There is a trend towards global harmonization of patent laws, with the World Trade
Organization (WTO) being particularly active in this area. The TRIPs Agreement has been
largely successful in providing a forum for nations to agree on an aligned set of patent laws.
Conformity with the TRIPs agreement is a requirement of admission to the WTO and so
compliance is seen by many nations as important. This has also led to many developing
nations, which may historically have developed different laws to aid their development,
enforcing patents laws in line with global practice.

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
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In addition, there are international treaty procedures, such as the procedures under the
European Patent Convention (EPC) [constituting the European Patent Organisation (EPOrg)],
that centralize some portion of the filing and examination procedure. Similar arrangements
exist among the member states of ARIPO and OAPI, the analogous treaties among African
countries, and the nine CIS member states that have formed the Eurasian Patent Organization.
A key international convention relating to patents is the Paris Convention for the Protection
of Industrial Property, initially signed in 1883. The Paris Convention sets out a range of basic
rules relating to patents, and although the convention does not have direct legal effect in all
national jurisdictions, the principles of the convention are incorporated into all notable
current patent systems. The most significant aspect of the convention is the provision of the
right to claim priority: filing an application in any one member state of the Paris Convention
preserves the right for one year to file in any other member state, and receive the benefit of
the original filing date. Another key treaty is the Patent Cooperation Treaty (PCT),
administered by WIPO and covering more than 140 countries. The Patent Cooperation Treaty
provides a unified procedure for filing patent applications to protect inventions in each of its
contracting states. A patent application filed under the PCT is called an international
application, or PCT application.

Application and prosecution

A patent is requested by filing a written application at the relevant patent office. The person
or company filing the application is referred to as "the applicant". The applicant may be the
inventor or its assignee. The application contains a description of how to make and use the
invention that must provide sufficient detail for a person skilled in the art (i.e., the relevant
area of technology) to make and use the invention. In some countries there are requirements
for providing specific information such as the usefulness of the invention, the best mode of
performing the invention known to the inventor, or the technical problem or problems solved
by the invention. Drawings illustrating the invention may also be provided.

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
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The application also includes one or more claims that define what a patent covers or the
"scope of protection".

After filing, an application is often referred to as "patent pending". While this term does not
confer legal protection, and a patent cannot be enforced until granted, it serves to provide
warning to potential infringers that if the patent is issued, they may be liable for damages

Once filed, a patent application is "prosecuted". A patent examiner reviews the patent
application to determine if it meets the patentability requirements of that country. If the
application does not comply, objections are communicated to the applicant or their patent
agent or attorney through an Office action, to which the applicant may respond. The number
of Office actions and responses that may occur vary from country to country, but eventually a
final rejection is sent by the patent office, or the patent application is granted, which after the
payment of additional fees, leads to an issued, enforceable patent. In some jurisdictions, there
are opportunities for third parties to bring an opposition proceeding between grant and
issuance, or post-issuance.

Once granted the patent is subject in most countries to renewal fees to keep the patent in
force. These fees are generally payable on a yearly basis. Some countries or regional patent
offices (e.g. the European Patent Office) also require annual renewal fees to be paid for a
patent application before it is granted.

Costs

The costs of preparing and filing a patent application, prosecuting it until grant and
maintaining the patent vary from one jurisdiction to another, and may also be dependent upon
the type and complexity of the invention, and on the type of patent.

The European Patent Office estimated in 2005 that the average cost of obtaining a European
patent (via a Euro-direct application, i.e. not based on a PCT application) and maintaining the

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
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patent for a 10-year term was around 32,000.[32] Since the London Agreement entered into
force on May 1, 2008, this estimation is however no longer up-to-date, since fewer
translations are required.

In the United States, in 2000 the cost of obtaining a patent (patent prosecution) was estimated
to be from $10,000 to $30,000 per patent.[33] When patent litigation is involved (which in
year 1999 happened in about 1,600 cases compared to 153,000 patents issued in the same
year[33]), costs increase significantly: although 95% of patent litigation cases are settled out
of court,[34] those that reach the courts have legal costs on the order of a million dollars per
case, not including associated business costs.

Alternatives to applying for a patent

A defensive publication is the act of publishing a detailed description of a new invention


without patenting it, so as to establish prior art and public identification as the
creator/originator of an invention, although a defensive publication can also be anonymous. A
defensive publication prevents others from later being able to patent the invention.

A trade secret is information that is intentionally kept confidential and that provides a
competitive advantage to its possessor. Trade secrets are protected by nondisclosure
agreements and employment law, each of which prevents information leaks such as breaches
of confidentiality and corporate espionage. Compared to patents, the advantages of trade
secrets are that the value of a trade secret continues until it is made public,[36] whereas a
patent is only in force for a specified time, after which others may freely copy the invention;
does not require payment of fees to governmental agencies or filing paperwork;[36] has an
immediate effect;[36] and does not require any disclosure of information to the public.[36]
The key disadvantage of a trade secret is its vulnerability to reverse engineering.[37]

Benefits

Primary incentives embodied in the patent system include incentives to invent in the first
place; to disclose the invention once made; to invest the sums necessary to experiment,

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH
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produce and market the invention; and to design around and improve upon earlier
patents.[38]

Patents provide incentives for economically efficient research and development (R&D).[39]
A study conducted annually by the IPTS shows that the 2,000 largest global companies
invested more than 430 billion euros in 2008[40] in their R&D departments. If the
investments can be considered as inputs of R&D, real products and patents are the outputs.
Based on these groups, a project named Corporate Invention Board, had measured and
analyzed the patent portfolios to produce an original picture[41] of their technological
profiles. Supporters of patents argue that without patent protection, R&D spending would be
significantly less or eliminated altogether, limiting the possibility of technological advances
or breakthroughs.[citation needed] Corporations would be much more conservative about the
R&D investments they made, as third parties would be free to exploit any developments. This
second justification is closely related to the basic ideas underlying traditional property
rights.[38][specify] Specifically, "[t]he patent internalizes the externality by giving the
[inventor] a property right over its invention." A 2008 study by Yi Quan of Kellogg School of
Management showed that countries instituting patent protection on pharmecuticals did not
necessarily have an increase in domestic pharmaceutical innovation. Only countries with
"higher levels of economic development, educational attainment, and economic freedom"
showed an increase. There also appeared to be an optimal level of patent protection that
increased domestic innovation.

In accordance with the original definition of the term "patent", patents are intended to
facilitate and encourage disclosure of innovations into the public domain for the common
good. Thus patenting can be viewed as contributing to open hardware after an embargo
period (usually of 20 years). If inventors did not have the legal protection of patents, in many
cases, they might prefer or tend to keep their inventions secret (e.g. keep trade
secrets).Awarding patents generally makes the details of new technology publicly available,
for exploitation by anyone after the patent expires, or for further improvement by other
inventors. Furthermore, when a patent's term has expired, the public record ensures that the
patentee's invention is not lost to humanity.

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In many industries (especially those with high fixed costs and either low marginal costs or
low reverse engineering costs computer processors, and pharmaceuticals for example),
once an invention exists, the cost of commercialization (testing, tooling up a factory,
developing a market, etc.) is far more than the initial conception cost. (For example, the
internal rule of thumb at several computer companies in the 1980s was that post-R&D costs
were 7-to-1.)

One effect of modern patent usage is that a small-time inventor, who can afford both the
patenting process and the defense of the patent,[45] can use the exclusive right status to
become a licensor. This allows the inventor to accumulate capital from licensing the
invention and may allow innovation to occur because he or she may choose not to manage a
manufacturing buildup for the invention. Thus the inventor's time and energy can be spent on
pure innovation, allowing others to concentrate on manufacturability.

Another effect of modern patent usage is to both enable and incentivize competitors to design
around (or to "invent around" according to R S Praveen Raj) the patented invention. This may
promote healthy competition among manufacturers, resulting in gradual improvements of the
technology base.[48] This may help augment national economies and confer better living
standards to the citizens. The 1970 Indian Patent Act[49] allowed the Indian pharmaceutical
industry to develop local technological capabilities in this industry. This act coincided with
the transformation of India from a bulk importer of pharmaceutical drugs to a leading
exporter.[citation needed] The rapid evolution of Indian pharmaceutical industry since the
mid-1970s highlights the fact that the design of the patent act was instrumental in building
local capabilities even in a developing country like India.

Criticism

Legal scholars, economists, activists, policymakers, industries, and trade organizations have
held differing views on patents and engaged in contentious debates on the subject. Critical
perspectives emerged in the nineteenth century that were especially based on the principles of
free trade.[51]:262263 Contemporary criticisms have echoed those arguments, claiming that
patents block innovation and waste resources (e.g. with patent-related overheads) that could

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otherwise be used productively to improve technology.[52][53][54] These and other research


findings that patents decreased innovation because of the following mechanisms:

Low quality, already known or obvious patents hamper innovation and commercialization.

Blocking the use of fundamental knowledge with patents creates a "tragedy of the
anticommons, where future innovations can not take place outside of a single firm in an entire
field

Patents weaken the public domain and innovation that comes from it.[

Patent thickets, or "an overlapping set of patent rights", in particular slow innovation.

Broad patents prevent companies from commercializing products and hurt innovation. In the
worst case, such broad patents are held by non-practicing entities (patent trolls), which do not
contribute to innovation. Enforcement by patent trolls of poor quality patents has led to
criticism of the patent office as well as the system itself.[66] For example, in 2011, United
States business entities incurred $29 billion in direct costs because of patent trolls.[67]
Lawsuits brought by "patent assertion companies" made up 61% of all patent cases in 2012,
according to the Santa Clara University School of Law.

Patents apply a "one size fits all" model to industries with differing needs,that is especially
unproductive for the software industry.

Rent seeking by owners of pharmaceutical patents have also been a particular focus of
criticism, as the high prices they enable puts life-saving drugs out of reach of many people.

Boldrin and Levine conclude "Our preferred policy solution is to abolish patents entirely and
to find other legislative instruments, less open to lobbying and rent seeking, to foster
innovation when there is clear evidence that laissez-faire undersupplies itAbolishing patents
may be politically challenging in some countries[citation needed], however, as the primary
economic theories supporting patent law hold that inventors and innovators need patents to
recoup the costs associated with research, inventing, and commercializing;[39] this reasoning
is weakened if the new technologies decrease these costs. A 2016 paper argued for substantial
weakening of patents because current technologies (e.g. 3-D printing, cloud computing,
synthetic biology, etc.) have reduced the cost of innovation

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Debates over the usefulness of patents for their primary objective are part of a larger
discourse on intellectual property protection, which also reflects differing perspectives on
copyright.

The patent system in india is administered by the Office of the Controller General of
Patents, Designs & Trade Marks (CGPDTM). Indian Patent Office is subordinate offices of
Indian Government and administered under the Indian Patent Act 1970. The Indian patent
offices are situated in Delhi, Kolkata, Chennai and Mumbai. There have been many changes
in the Indian Patent Act so far. However, the changes in the Patent Acts and Rules made in
1999, 2002, 2005, 2006) are necessitated by India's obligation under TRIPS agreement.
TRIPS refer to the Trade Related Aspects of Intellectual Property Rights, allowing product
patents in the field of chemical and drugs.

However, Indian Patent Act introduces the section 3 (d) by the amendment of the Patent Acts
in 2005 in order to stop ever greening of patents. Another important feature was the
introduction of pre-grant representation (opposition) in addition to the existing post-grant
opposition mechanism. The pre-grant representation has had success in a short span. One
example is the abandonment of a patent application by Novartis on Glivec (Imatinib
Mesylate) under section 3(d) of the act and revoking the earlier granted EMR on the same
drug used to treat Leukemia.

One of the controversial provisions of these amendments was on software patent-ability,


which was later withdrawn in amendment in 2005. The Patent Rules 2003 was amended in
2005 but again amended in 2006. Some of the important features of both the 2005 & 2006
Rules are the introduction of reduced time lines and a fee structure based on specification size
and number of claims, in addition to a basic fee.

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Social, Ecnomical & Psychological angle of


Study
The recent history seems to show that technology and knowledge are important factors for
economic growth and development. Since the creation of the first mechanism to protect
inventions in 15 thcentury, the patent system has evolved with a view to promote innovation
and encouraging economic development. By offering exclusive rights for a limited period, an
inventor may recover R&D costs and investments. It also promotes investment to
commercialize and market new inventions so that the general public can enjoy the fruit of the
innovation. Further, the system is designed to disseminate knowledge and information to the
public through publication of patent applications and granted patents.Many countries, in
particular least developed countries, have only begun to address the challenges of setting up
an appropriate patent system in place to reap economic and social benefits. The development
of these countries' resources and infrastructure and their capacity to benefit from the rapid
growth of intellectual property as a valuable economic asset in the world economy remain an
urgent concern.
In view of the disparity in economic wealth between nations, does the patent system hamper
development rather than promote it? How can both nations and individuals utilize the patent
system and develop national intellectual property assets? In a recent past, a number of
questions have been raised in respect of the potential effects of different degrees and forms of
patent protection on various economic and social measures. Considering the differences
among countries, there might be a need to question the assumption of applying the same
patent standard to all. A national strategy may need to be effectively set up on the basis of a
country's unique requirements and priorities. Addressing questions as to how the patent
system can play an important role in fostering development and eradicating poverty will
certainly contribute to a better understanding of the role of the patent system in the broader
range of national development policy measures and to formulate a patent policy that meets
the interests of each country.

Creativity and the process of innovation are fertile grounds for psychological research, with
applications spanning education, the arts, business and science. Last year, the U.S. Supreme
Court took up the topic of creativity in the context of patent law. The case, Mayo

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Collaborative Services v. Prometheus Laboratories, Inc., revisited a long-observed legal


prohibition on patenting the "laws of nature" and illustrates one of the many ways in which
law, particularly intellectual property law, can be informed and shaped by psychological
principles.
At issue in Mayo was a series of patents issued to Prometheus Labs regarding the treatment of
autoimmune diseases with a drug called thiopurine. Although use of the drug is widespread,
finding the correct dosage for each patient had been difficult because people metabolize the
drug at different rates. Prometheus Labs discovered that certain compounds in the blood
called metabolites accurately predicted whether a patient's dosage was likely to be effective
or cause dangerous side effects and sought to patent this discovery. The patented process
directed physicians to administer thiopurine to the patient, to measure the quantities of
metabolites in the patient's blood and to adjust the dosage of thiopurine accordingly.
The Supreme Court, reviewing a challenge to the patent, held that Prometheus Labs had
attempted to patent a law of nature that was inherently non-patentable. While recognizing that
every invention involves, to some extent, a law of nature, the court noted that the patents at
issue added nothing new or original to the biological relationship between thiopurine and
metabolite levels. The court held that allowing Prometheus Labs to patent such a discovery
would stifle future research and innovation, violating the central goal of the patent system: to
encourage innovation.
The court, in Mayo, identified the competing incentives created by the availability of patents:
The rights granted by patents are intended to provide an economic incentive for innovation
but may also restrict the flow of information and cross-fertilization of ideas among inventors.
To balance these interests, patents are generally issued only for inventions that are novel, not
obvious and useful. The court also recognized the breadth of the fields to which patent law
(and, more broadly, intellectual property law) applies. Different types of creative activities
may involve different aspects of creativity.
Psychologists have much to contribute to an understanding of the cognitive processes by
which people engage in creative activity, how those processes are similar and different across
substantively different fields, what motivates creative activity, whether and how the rules of
intellectual property can encourage or stifle innovation, and what else might be done to
cultivate innovation. The processes involved in how people creatively identify problems to be
examined and how they craft innovative solutions to those problems can differ drawing
differently, for example, on divergent or convergent thinking (see Northwestern University

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Law Review, 2010). In addition, how observers evaluate the novelty, obviousness or utility of
an invention has implications for the application of the law.
Scholars have also begun to think about how psychology and patent law may come together
to influence "large-scale collaborative creativity" Modern scientific endeavors frequently
involve teams of scientists and other scholars, rely on multidisciplinary contributions and
unfold over lengthy periods of time. Whether and how individual contributors to these
enterprises are motivated to be creative, how collaborative processes influence creativity,
how information is shared (or not) in ways that promote or hinder creative processes, and
other questions about how innovation occurs in group settings have important implications
for the courses these large-scale projects will follow.

PATENT IN INDIA AND IN GLOBAL WORLD

In the United Kingdom, a patent provides its proprietor with the right to exclude others from
utilizing the invention claimed in that patent. Should a person utilize that invention, without
the permission of the patent proprietor, they may infringe that patent.

Legislation

Infringement under United Kingdom patent law is defined by Section 60 of the Patents Act
1977 (as amended), which sets out the different types of infringement.

Infringement

Where the invention is a product, by the making, disposing of, offering to dispose of, using,
importing or keeping a patented product.

Where the invention is a process, by the use, or offer for use where it is known that the use of
the process would be an infringement. Also, by the disposal of, offer to dispose of, use or
import of a product obtained directly by means of that process, or the keeping of any such
product whether for disposal or otherwise.

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By the supply, or offer to supply, in the United Kingdom, a person not entitled to work the
invention, with any of the means, relating to an essential element of the invention, for putting
the invention into effect, when it is known (or it is reasonable to expect such knowledge) that
those means are suitable for putting, and are intended to put, the invention into effect in the
United Kingdom.

An action for infringement can only be brought after grant of the patent, but damages can be
recovered under Section 69 for infringing acts conducted after publication of the application,
but before grant, provided those acts infringe the claims both as published and as granted, and
provided the defendant can be shown to have been aware of the existence of the patent (or
patent application). The protection conferred by publication of the application is known as
provisional protection. Publication of European applications and Patent Cooperation Treaty
(PCT) applications confers provisional protection in the same manner, provided the
application is published in English.

Remedies

A claimant for infringement may be awarded a range of remedies (under section 61),
depending on the facts of the particular case. Damages may be awarded to rectify financial
harm suffered, an injunction may be granted to prevent further action by the infringer, an
account of profits may be ordered, an order for the delivery up or destruction of infringing
items may be made or a declaration that the patent is valid and infringed may be granted to
the patentee. Both damages and an account of profits may not be ordered in respect of the
same infringement.[1] Limitations on damages or costs may apply under certain
circumstances, for example if the defendant was unaware of the patent's existence] or where
the patent was subject to a transaction that was not registered at the Patent Office within 6
months.[3]

Under United States law, a patent is a right granted to the inventor of a (1) process, machine,
article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A
patent is the right to exclude others from using a new technology. Specifically, it is the right
to exclude others from making, using, selling, offering for sale, importing, inducing others to
infringe, and/or offering a product specially adapted for practice of the patent.

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United States patent law is authorized by the U.S. Constitution. Article One, section 8,
clause 8 states:

The Congress shall have power ... To promote the progress of science and useful arts, by
securing for limited times to authors and inventors the exclusive right to their respective
writings and discoveries;

Patent law is designed to encourage inventors to disclose their new technology to the world
by offering the incentive of a limited-time monopoly on the technology. This limited-time
term of patent is 20 years from the earliest patent application filing date (but this term can be
extended via patent term adjustment). After the patent term expires, the new technology
enters the public domain and is free for anyone to use.

Substantive law

Patent law is found under Title 35 of the United States Code. The "patentability" of
inventions (defining the types things that qualify for patent protection) is defined under
Sections 100-105. Most notably, section 101[2] sets out "subject matter" that can be patented;
section 102[3] defines "novelty" and "statutory bars" to patent protection; section 103[4]
requires that an invention must not only be new, but also "non-obvious".

Patentable subject matter

"Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof may obtain a patent
therefor, subject to the conditions and requirements of this title." 35 U.S.C. 101. To be patent
eligible subject matter, an invention must meet two criteria. First, it must fall within one of
the four statutory categories of acceptable subject matter: process, machine, manufacture, or
composition of matter. Second, it must not be directed to subject matter encompassing a
judicially recognized exception: laws of nature, physical phenomena, and abstract ideas.
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(a) NOVELTY; PRIOR ART.A person shall be entitled to a patent unless

(1) the claimed invention was patented, described in a printed publication, or in public use, on
sale, or otherwise available to the public before the effective filing date of the claimed
invention...

For a technology to be "anticipated" (and therefore patent-ineligible) under 35 U.S.C. 102,


the prior art reference must teach every aspect of the claimed invention either explicitly or
impliedly. A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference. Verdegaal
Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).

Obviousness (103

To be patentable, a technology must not only be "new" but also "non-obvious." A technology
is obvious (and therefore ineligible for a patent) if a person of "ordinary skill" in the relevant
field of technology, as of the filing date of the patent application, would have thought the
technology was obvious. Put differently, an invention that would have been obvious to a
person of ordinary skill at the time of the invention is not patentable. Specifically, 35 U.S.C.
103 states:

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

A patent for a claimed invention may not be obtained, notwithstanding that the claimed
invention is not identically disclosed as set forth in section 102, if the differences between the
claimed invention and the prior art are such that the claimed invention as a whole would have

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been obvious before the effective filing date of the claimed invention to a person having
ordinary skill in the art to which the claimed invention pertains.

The non-obviousness requirement does not demand that the prior art be identical to the
claimed invention. It is enough that the prior art can somehow be modified in order to teach
the claimed technology. So long as the modification of the prior art (or combination of
several prior art references) would have been obvious to a person of ordinary skill in the art at
the time the application was filed, the applied-for technology will be considered obvious and
therefore patent-ineligible under 35 U.S.C. 103.

Patent application procedure

U.S patent

Patent applications can be filed at the United States Patent and Trademark Office. The
application process is somewhat slow and generally expensive. Estimate $10,000 to $30,000
dollars in filing and legal fees, and about 3 years from filing the application to the issue date.

The rules for drafting and filing a patent application are set out in the Manual of Patent
Examination Procedure (or "MPEP").

Pre-grant publication (PG Pub

Since the American Inventors Protection Act, the United States Patent and Trademark Office
publishes patent applications 18 months after they are filed. This time limit can be extended

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under certain circumstances, for an additional fee.[5] The applications may be published
before a patent has been granted on them if the patent is not granted within the 18 month time
frame. Applicants can opt out of publication if the applications will not be prosecuted
internationally.

Patent infringement, enforcement and litigation

International Trade Commission (ITC)

In the United States, a patent holder may wish to pursue a cause of action in the ITC instead
of, or in addition to the court system.[citation needed] In contrast to courts, which have a
wide range of remedies at their disposal, the ITC can only do one thing when it comes to
patent infringement: grant or deny injunctive relief by ordering to keep infringing products
from being imported into the United StatesIn some cases, this may provide a quicker
resolution to a patent owner's problems.

Enforcement Of Intellectual Property Laws In India

India has a well-established statutory, administrative and judicial framework to safeguard


Intellectual Property Rights (IPRs), however, it is still facing problems with the enforcement
of IPR. It has always been a concern about slow judicial system involving lengthy and time-
consuming procedure of trial in India, however, in recent years, Indian Courts have shown
dynamism and zeal for effective protection of Intellectual Property Rights. It has been
observed that by adopting right policies and strategies, IPR can be effectively protected with
the help of law enforcement authorities.

For any IPR related litigation, it is necessary to understand the Indian Judicial system and its
psychology. It has been observed that the Indian Courts are very active in granting equitable
reliefs like injunctions, etc., but are still reluctant in awarding punitive pecuniary damages.

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Authorities involved in the Execution of Orders of Courts

The Government Authorities including Police are bound to execute and enforce the orders of
Court, and as such the Courts are empowered to direct any government authority to do or not
to do or prevent / compel any person to comply with the orders of the Court. There are
effective methods for the enforcement of the orders of the Court, including Contempt of
Court proceedings, which provides for a fine as well as imprisonment, in case of non-
compliance of the order of the Court. Execution/ compliance of the orders of the court are
also done by way of appointment of the Local Commissioner/Receivers by the Court. In
India, certain State Governments have formed Special Intellectual Property Cells, which deal
with offences relating to infringement of IPR.

In any civil action for enforcement of Intellectual Property Rights, the following reliefs may
be claimed in such suit:

Permanent Injunction;

Interim Injunction;

Damages;

Accounts and handing over of profits;

Anton Pillar Order (Appointment of Local Commissioner by the Court for custody/
sealing of infringing material/accounts);

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Delivery up of goods/packing material/dies/plates for destruction.

Additionally, in case of infringement of Trademark, infringement of Copyright, Geographical


Indication, Plant Variety and Semiconductor Integrated Circuits Layout Design following
Criminal action can also be initiated:

Registration of First Information Report (FIR); or

Filing of a Criminal Complaint before a Competent Magisterial Court with application for
issue of search and seizure warrants directing the police to raid of the premises of the accused
for seizure of the infringing material and arrest of the infringers.

It is interesting to note that in India, wherever provisions have been made for criminal
prosecution for violation of any Intellectual Property Rights, a criminal case can be filed
against known as well as unknown persons. It is also important to note that both civil and
criminal remedies, wherever applicable, can be availed simultaneously and both the remedies
are coexistent.

Procedure for Grant of a Patent in India

After filing the application for the grant of patent, a request for examination is required to be
made for examination of the application by the Indian Patent Office. After the First
Examination Report is issued, the Applicant is given an opportunity to meet the objections
raised in the report. The Applicant has to comply with the requirements within 12 months
from the issuance of the First Examination Report. If the requirements of the first
examination report are not complied with within the prescribed period of 12 months, then the
application is treated to have been abandoned by the applicant. After the removal of
objections and compliance of requirements, the patent is granted and notified in the Patent
Office Journal. The process of the grant of patent in India can also be understood from the
following flow chart:

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Filing of Application for Grant of Patent in India by Foreigners

India being a signatory to the Paris Convention for the Protection of Industrial Property, 1883
and the Patent Cooperation Treaty (PCT), 1970, a foreign entity can adopt any of the
aforesaid routes for filing of application for grant of patent in India.

Where an application for grant of patent in respect of an invention in a Convention Country


has been filed, then similar application can also be filed in India for grant of patent by such
applicant or the legal representative or assignee of such person within twelve months from
the date on which the basic application was made in the Convention Country i.e. the home
country. The priority date in such a case is considered as the date of making of the basic
application.

Pre-Grant Opposition

A representation for pre-grant opposition can be filed by any person under Section 11A of the
Patents Act, 1970 within six months from the date of publication of the application, as
amended (the "Patents Act") or before the grant of patent. The grounds on which the
representation can be filed are provided under Section 25(1) of the Patents Act. There is no
fee for filing representation for pre-grant opposition. Representation for pre-grant opposition
can be filed even though no request for examination has been filed. However, the
representation will be considered only when a request for examination is received within the
prescribed period.

Post-Grant Opposition

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Any interested person can file post-grant opposition within twelve months from the date of
publication of the grant of patent in the official journal of the patent office.

Grounds for Opposition

Some of the grounds for filing pre-and post-grant opposition are as under:

Patent wrongfully obtained;

Prior publication;

The invention was publicly known or publicly used in India before the priority date of that
claim;

The invention is obvious and does not involve any inventive step;

That the subject of any claim is not an invention within the meaning of this Act, or is not
patentable under this Act;

Insufficient disclosure of the invention or the method by which it is to be performed;

That in the case of a patent granted on convention application, the application for patent was
not made within twelve months from the date of the first application for protection for the
invention made in a convention country or in India;

That the complete specification does not disclose or wrongly mentions the source and
geographical origin of biological material used for the invention; and

That the invention was anticipated having regard to the knowledge, oral or otherwise,
available within any local or indigenous community in India or elsewhere.

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Term of Patent

The term of every patent in India is twenty years from the date of filing the patent
application, irrespective of whether it is filed with provisional or complete specification.
However, in case of applications filed under the Patent Cooperative Treaty (PCT), the term of
twenty years begins from the international filing date.

Payment of Renewal Fee

It is important to note that a patentee has to renew the patent every year by paying the
renewal fee, which can be paid every year or in lump sum.

Restoration of Patent

A request for restoration of patent can be filed within eighteen months from the date of
cessation of patent along with the prescribed fee. After the receipt of the request, the matter is
notified in the official journal for further processing of the request.

Patent of Biological Material

If the invention uses a biological material which is new, it is essential to deposit the same in
the International Depository Authority ("IDA") prior to the filing of the application in India
in order to supplement the description. If such biological materials are already known, in such
a case it is not essential to deposit the same. The IDA in India located at Chandigarh is
known as Institute of Microbial Technology (IMTECH).

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What are the Rights granted by Patent?

If the grant of the patent is for a product, then the patentee has a right to prevent others from
making, using, offering for sale, selling or importing the patented product in India. If the
patent is for a process, then the patentee has the right to prevent others from using the
process, using the product directly obtained by the process, offering for sale, selling or
importing the product in India directly obtained by the process.

Before filing an application for grant of patent in India, it is important to note "What is not
Patentable in India?" Following i.e. an invention which is (a) frivolous, (b) obvious, (c)
contrary to well established natural laws, (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, 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.

Maintainability of Secrecy by the Indian Patent Office (IPO)

All patent applications are kept secret up to eighteen months from the date of filing or priority
date, whichever is earlier, and thereafter they are published in the Official Journal of the
Patent Office published every week. After such publication of the patent application, public
can inspect the documents and may take the photocopy thereof on the payment of the
prescribed fee.
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Compulsory Licensing

One of the most important aspects of Indian Patents Act, 1970, is compulsory licensing of the
patent subject to the fulfillment of certain conditions. At any time after the expiration of three
years from the date of the sealing of a patent, any person interested may make an application
to the Controller of Patents for grant of compulsory license of the patent, subject to the
fulfillment of following conditions, i.e.

the reasonable requirements of the public with respect to the patented invention have not been
satisfied; or

that the patented invention is not available to the public at a reasonable price; or

that the patented invention is not worked in the territory of India.

It is further important to note that an application for compulsory licensing may be made by
any person notwithstanding that he is already the holder of a license under the patent.

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CASE STUDY

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Cipla Ltd. Vs Hoffmann-La Roche Ltd. & Anr.


The dispute started when the case was filed in January 2008 by Roche based on media reports
that Cipla has an intention to launch Erlocip, a generic version of Roche's drug Tarceva based
on Roche's Indian Patent 196774. Roche approached Delhi HC seeking to injunct Cipla from
marketing Erlocip. Roche's plea for interim injunction against Cipla was dismissed by Single
Judge on March 19th, 2008, Roche's appeal to the Division Bench against the order passed by
the Single Judge was dismissed on April 24th, 2009. Roche's subsequent escalation of the
matter on special leave before the Supreme Court was also denied and the case moved to
trial. The trial was completed by Single judge and Judgement was pronounced on September
7th , 2012 in favour of Roche so far as the validity of the Patent was concerned. Apart from
the ancillary issues the main issues addressed in the judgement were: 1) Whether Roche's
patent stands to be revoked? and 2) Whether the Cipla's manufacture of Erlocip infringes
Roche's patent? The single judge held that Cipla was not infringing Roche's patent and
refused to grant any injunction against Cipla. The single judge had also refused to revoke the
patent of Roche as sought by Cipla. Ciplas defence to the charge of infringement was
essentially based on the claim that Roches Patent is for Polymorphs A+B of Erlotinib
Hydrochloride, whereas Tarceva i.e. Roches product is just Polymorph B, which
corresponds to a US Patent 221 (and the rejected Indian Patent Application DEL507).
Hence Cipla urges that while the patent sought to be enforced is for Polymorphs A+B, the
product actually under manufacture by both Roche and Cipla is Polymorph B which ought to
be assumed to be in the public domain and hence Ciplas activities are non-infringing in
nature. Whereas Roches argument was that suit patent was not confined to any polymorphic
form of Erlotinib Hydrochloride and hence as long as Erlotinib Hydrochloride is present in
Ciplas product Erlocip, it infringes the suit patent. The Judgement captured here decides two
appeals from the Judgement of the Single Judge. The first one filed by Roche was partially
allowed and the second one filed by Cipla was dismissed. While allowing the Roches appeal
for reversing the judgement of single judge on infringement the bench held that it is apparent
that the Learned Single Judge has referred to two distinct things i.e. Claim 1 of 774 Patent
and Tarceva, interchangeably, to determine the infringement question and comes to what
appears to us to be an erroneous conclusion. It is an incorrect analysis of product patent

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infringement in a case like the present, to use methodologies like X-Ray diffraction to
ascertain whether the competing products are identical in nature. The correct test of
infringement in this case is to map Cipla product against the Roches patent claims, which we
find has not been done by the learned Single Judge, and this is the third infirmity on this
aspect of the dispute. (Para 76) 3 Division bench ruled in favour of Roche after noting

HELD: The Bench said, a product essentially comprises a substance (active ingredient) or
composition (combination of active ingredients). A product patent protects the product in any
form however it is made, or however it is formulated. Many different drug products may be
marketed with the same active moiety and the same product can thus have various structural
forms. Thus Section 3(d) envisages a variety of derivatives of known substances (Para 31)
some illustrative types could be as under: - i. A compound which is not active in itself but is
metabolized in the body to form an active drug known as prodrug. For e.g., chloramphenicol
succinate ester is used as an intravenous prodrug of chloramphenicol, because pure
chloramphenicol does not dissolve in water. ii. A composition (combination of two or more
active ingredients or combination of a pharmaceutical carrier with a compound not used as a
drug before). Substance S. 3(d) New Product S. 2(1)(j) Pharmaceutical Substance S. 2(1) (ta)
Enhanced Efficacy Inventive Step 5 iii. A drug delivery system which is a composition that
its constituents enable to be administered in a particular way.

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Plaintiff CTR Manufacturing Industries Limited Vs.


Defendants Sergi Transformer Explosion Prevention
Technologies Pvt. Ltd. & Ors.
The Plaintiff (CTR) had Indian Patent No. 202302 granted on 3rd August 2006 for an
explosion and fire detection technology for use in electrical transformers. As per the facts
provided in the Judgement this appears to be a very strange Patent for the following reasons:
(1) The Patent was granted on 3rd August 2009 (within 8.5 months of filing) but grant
inadvertently had not been notified under Section 43(2) of the Patents Act by the Patent
office until January 2010. (2) Clueless about the status of the Patent the defendant filed a Pre-
Grant and Post-Grant opposition on the same day on 20th January 2010. (3) Finally the grant
of CTR's Patent No. 202302 was published in the Official Journal on 16th April 2010. (4) On
27th January 2012, The Controller of Patents informed that he did not take Sergi's pre-grant
opposition on record because of some pending documents. Sergi filed Writ Petition No. 2308
of 2011 at High Court of Bombay against that decision, also urging that CTR's Patent had
been granted with uncommon despatch. At the hearing of that petition, Sergi placed the order
before Division Bench which allowed Sergi to file those documents within two weeks. (5)
While the Infringement matter was being heard in the Thane District court, Sergi on 19th
June 2012, filed a revocation application (ORA Nno.42/12/PT/MUM) at Intellectual Property
Appellate Board ("IPAB"). To the surprise of the judge, it was precisely the situation that the
Supreme Court (in Aloys Wobben & Anr. v Yogesh Mehra) said was unlikely ever to arise:
where there are, pending all at once, a post-grant opposition (and also a pre-grant opposition,
it seems), a Counter-Claim and an application for revocation. Now coming back to the
judgement, Plaintiff (CTR) claimed that Sergis product, the SERGI 3000, is an infringement.
Sergi says it is no such thing, and its product uses a different technology. Sergi claims it has a
license to manufacture fire systems in accordance with another Indian Patent No.189089
granted on 14th December 2002. CTR earlier filed a case for suit for infringement at Thane
District court and was granted ex parte ad-interim reliefs against the defendant restraining the
defendant from selling its product to DTL (a company who floated a tender for the same
product). DTL opened the price bids. Sergi (defendant) was declared to be the lowest bidder,
Sergi wrote to DTL saying it looked forward to receiving a purchase order and DTL placed a
purchase order on Sergi. Later Thane District Court allowed CTRs application for interim

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relief and defendant appealed. The Appeal Court found that the ad-interim and interim orders
(the first adinterim order) and (the final order) of the Thane District Court in fact continued in
force and survived; and that both orders were in the nature of subsisting and binding ad-
interim orders. The judgement and order was stayed for four weeks, subject to Sergi not
entering into a fresh contract with another party in respect of the products in question. It was
clarified that the stay was to enable Sergi to execute the contract with DTL. CTR filed
Special Leave Petition before the Supreme Court against the order(s) of the Thane Court. A
leave was granted in both Special Leave Petitions and these were disposed of with several
directions.

HELD: The matter was heard in the High Court and was decided in favour of Plaintiff, CTR,
the judge held that the pith and marrow of CTRs invention is 9 the two integers working
interdependently to produce what is, prima facie, a dramatically improved result at the stage
of an explosion detection (not fire extinguishing or fire detection and prevention); it was held
that Sergi has entirely abandoned its patent and has adopted CTRs; Sergi could not have met
the DTL bid without such an infringement. It was held that Sergi cannot possibly be
permitted to continue with what was found to be a clear case of infringement.

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Merck Sharp & Dohme Corporation & Anr Vs.

Glenmark Pharmaceuticals Ltd.


Plaintiffs filed this suit against the defendant for permanent injunction in respect of
Sitagliptin Phosphate Monohydrate or any other salt of Sitagliptin in any form, alone or in
combination that infringes the claimed Plaintiffs Patent No. 209816. The defendants were
selling Sitagliptin Phosphate monohydrate under the brand ZITA and Sitagliptin Phosphate
Monohydrate and Metformin Hydrochloride under the brand name ZITA MET. Defendant
had filed written statement-cum-counter claim wherein, had prayed for revocation of the suit
patent. Defendant has alleged that it does not infringe the suit patent since: I. it lacks
inventive step II. invention claimed lacks industrial applicability within the meaning of
section 64(1)(g) of the Act. Invention disclosed was physically and chemically unstable in
nature and was incapable of being used in solid dose formulations; III. Disclosure was
insufficient within the meaning of Section 64(1)(h) as complete specification was not
disclosed regarding the preparation of Sitagliptin base so as to enable a person in India,
possessing average skill and knowledge to work the invention, IV. Any claim of the complete
specification is not fairly based on the matter disclosed in the specification, thus, violated
section 64(1)(i) of the Act. V. Patent was obtained on a false suggestion or representation and
was liable to be revoked under Section 64(1) (j) of the Act. VI. Applicant failed to comply
with Section 8 of the Act resultantly patent is liable to be revoked under Section 64 (1) (m) of
the Act. Following Issues were framed accordingly: I. Whether the plaint has been signed,
verified and filed by a duly authorized person? II. Whether the plaintiff is the proprietor of
Indian Patent No. 209816? III. Whether the plaintiff is not the owner of the patent no.
209816? IV. Whether the defendants have been infringing patent No. 209816 of the plaintiff?
V. Whether the defendant has misrepresentations on the product packaging and package
insert? VI. Whether the license agreement between plaintiff No.1 and plaintiff no. 2 has not
been executed in accordance with law? VII. Whether the registration/recordal of the license
agreement between the plaintiffs qua the suit patent has not been done in accordance with
Indian law? VIII. Whether the plaintiffs have suppressed material facts and documents, if so,
its effect? IX. Whether the defendants product ZITA and ZITA-MET infringe the patent of
the plaintiff? X. Whether the patent No. 209816 is invalid? XI. Whether the Dihydrogen

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Phosphate Salt of Sitagliptin is covered, enabled and disclosed in the suit patent? If so, its
effect? XII. Relief

HELD: The judge held that onus to prove that invention in the suit patent was obvious to a
person skilled in the art was on the defendant, in which defendant has failed to discharge by
leading a positive evidence on record. Mere comparison of chemical structure is not
sufficient, inasmuch as, picking up parts of chemical structures of different patents and
clubbing them will also not be sufficient, as it appears to have been done, keeping in mind the
molecular structure of the suit patent, as a hindsight analysis. A direct question was put to
Defendants witness 2, that the methodology followed by him was typically referred to as
hindsight analysis and is a prohibited methodology in patent law to which he answered I
have no comments. He has not denied this suggestion. Instead has given a vague answer
which is deemed admission on this point. Hindsight analysis is not permissible. Even
otherwise, not much reliance can be placed on this witness. Above all, PW4 inventor of the
suit patent, was not confronted with these prior arts nor was any question put to her that, in
view of the patents cited, invention was obvious. Furthermore, Plaintiff Witness 2, for the
detailed reasons, has categorically stated that suit patent was not obvious to a person skilled
in the art. This contention of defendant was, thus, rejected. In the judgement the defendant
was restrained by a decree of permanent injunction from making, using, selling, distributing,
advertising, exporting, offering for sale or dealing in Sitagliptin Phosphate Monohydrate or
any other salt of Sitagliptin in any form, alone or in combination with one or more other

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Appellant Shilpa Medicare Limited Versus


Respondents Bristol-Myers Squibb Company and
Ors.
This matter was a result of an appeal by the second defendant who is an appellant in this case
(Shilpa Medicare) against the order of a single judge dated 11th October 2013 dismissing
its application for challenge of the jurisdiction. Shilpa sought an order seeking return of the
plaint to the Plaintiff for presentation in the appropriate court. A little background of the
matter: Pursuant to a request made to the Drugs Control Department of Karnataka under the
Right to Information Act, 2005, the Plaintiffs learnt that Shilpa Medicare had applied for and
had been granted a manufacturing license by the Drug Controller and Licensing Authority,
Karnataka for manufacturing Dasatinib bulk drug. In addition, Shilpa Medicare, in its
website, had listed Dasatinib in their product list as 'Under Development Oncology Active
Pharmaceutical Ingredients. The plaintiffs (Respondents here) expressed apprehensions,
consequently about the threat of the first two defendants (Appellants in this case) entering
into arrangement with Natco Pharma, to manufacture and sell Dasatinib (API) and that
respondent also believed 19 they are soon going to sell and/or offer for sale Dasatinib
(API) to various generic pharmaceutical companies located in India including but not limited
to Defendant No. 3 (Natco Pharma). Defendants Nos.1 & 2 are further likely to increase their
revenue by exporting bulk quantities of Dasatinib (API) to various international
pharmaceutical companies located abroad." Bristol-Myers Squibb (Respondent in this case)
filed a quia timet action in the Delhi High Court. After notice and summons were issued,
Shilpa, inter alia, filed an application (IA No. 10403/2013) for return/dismissal of the plaint.
It claimed that the manufacturing license that has been granted to it by the State Drugs
Control Department of Karnataka is for its manufacturing unit located in district Raichur,
Karnataka. Shilpa averred that it neither has a registered office nor a branch office in Delhi
and, therefore, the Court does not have any territorial jurisdiction to entertain the suit. It was
alleged that the Plaintiffs have indulged in forum shopping and, therefore, the plaint must
either be rejected or returned. In reply to the said application, Bristol Myers submitted that a
part of the cause of action has arisen in Delhi, as Shilpa has customers, consumers, buyers
and a host of other persons for various aspects of their business activities in Delhi and thus
have purposefully availed jurisdiction of Delhi. Thus Plaintiffs invoked the jurisdiction of

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Delhi on the basis of the threat or apprehension that the actions of the Defendant within the
territorial jurisdiction of Delhi High Court are likely to cause prejudice to the Plaintiff. The
Plaintiffs urged that the Court can entertain such action, even if the threat has not culminated
into a reality. So, one of the issues that arose for determination was whether, in the facts and
circumstances of the present case, based on the averments made in the plaint, it can be said
that the Court has territorial jurisdiction to entertain the suit. Particular to the present case, the
question that arises is whether the mere apprehension of the Plaintiff or its perception of a
threat of infringement by the Defendants of its patent occurring within the local limits of this
Court is sufficient to attract the jurisdiction of this Court.

HELD:The single judge said, it is not necessary at this stage, for the Plaintiff to name the
particular customers of Defendants to whom the product is to be sold since what is expressed
is only an apprehension of "offer for sale". At this stage, the Plaintiff can at best refer to the
fact that Defendant supplies oncology APIs to various generic companies and that the said
APIs are sold in Delhi. The apprehension that such oncology APIs may in the near future

include the infringing product which is also an oncology API cannot, in the circumstances, be
characterised as lacking credibility and having been asserted merely to attract the jurisdiction
of the Court. The above averments in the present plaint, which is in a quia timet action, are
prima facie sufficient to show that Defendant (Shilpa) "carries on business" in Delhi and that
the prima facie [sic] the cause of action arises within the jurisdiction of this Court. The bench
in its order noticed that . impugned order has taken note of the plaint averments,
particularly Paras.that Shilpa intends to supply API to various generic manufacturers in
India and abroad. It was stated that the plaintiff was not obliged to name specific customers
of the defendants products and the assertion that the latter offered oncology APIs which
could include infringing products in the future, were sufficient averments to constitute cause
of action, within territorial jurisdiction of this court. For the above reasons, it is held by the
bench that there is no infirmity with the impugned order of the learned single judge rejecting
the Appellants application.

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Petitioner Novartis AG Vs. Respondents Union of


India, Wockhardt Limited and The Deputy
Registrar, Intellectual Property Appellate
Board(2015)
Writ Petition was filed by the Petitioner to Challenge the alleged arbitrary exercise of
discretion of power vested with the IPAB to entertain a Miscellaneous Petition (in a matter
numbered ORA/21/2013/PT/CH) for reception of additional documents and raising additional
grounds. It was submitted that the IPAB relied on Section 92(2) of the Trade Marks Act,
1995, and observed that it is vested with enormous and unambiguous power to deal with the
Miscellaneous Petitions on the basis of principles of natural justice and powers conferred
under Section 92(1) (2) &(3) of the Trade Marks Act, 1999 and this finding of the Tribunal is
erroneous, since already the IPAB (Patent Procedure) Rules, 2010, were framed under
Section 92 of the Trade Marks Act and the said Rules did permit additional grounds to be
raised apart from the grounds initially raised in Form-1 of the Revocation Application and
therefore, the reliance placed on Section 92 of the Trade Marks Act is contrary to law.

HELD:The bench held that in terms of sub-section (1) of Section 92, though the appellate
Board shall not be bound by the procedure laid down in the Code of Civil Procedure, it shall
be guided by principles of natural justice and subject to the provisions of the Act and Rules
made under and the appellate Board shall have powers to regulate its own procedure
including the fixing of places and times of its hearing. Sub-section (2) of Section 92, states
that the appellate Board shall have the same power as vested in a civil Court under the Code
of Civil Procedure, while trying a suit in respect of matters (a) receiving evidence; (b) issuing
commissions for examination of witnesses; (c) requisitioning any public record; and (d) any
other matter which may be prescribed. Thus on a conjoint reading of Section 92(1), 92(2)(a)
of the Trade Marks Act and 107B of the Patents Act, the bench said that we have no
hesitation to hold that the appellate Board is vested with powers to regulate its own procedure
as it is vested with the same powers of a Civil Court under Code of Civil Procedure, more
particularly for the purpose of receiving evidence. Thus, the Appellate Board was fully
justified in entertaining the Miscellaneous Petition filed by the second respondent. In the light

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of the above discussion. the order impugned passed by the IPAB was held valid and was
not interfered. Accordingly, the Writ Petition failed and was dismissed.

Petitioner S. M. Anand Vel Vs. Respondent Union of


India, Controller General of Patents Designs &
Trade Marks (Mumbai), CGPDTM (Chennai),
Assistant Controller Patents (Chennai)(2014)
Petitioner was not heard by the controller before passing order for refusal of Patent as per
Section 15 of The Patents Act. The Controller only after hearing the petitioner can pass a
speaking order as per Section 15 of Act. The petitioner challenged the impugned order of the
Controller, in fact, a rejection of the application for the grant of patent, which could be done
inconsonance with Sections 14 and 15 of the Patent Act. Brief History of the matter: A First
Examination Report was issued by the Controller on 30th November 2010 and thereafter, the
petitioner amended the claims on 25th May 2011. Consequent thereto, the Controller re-
examined the matter and issued another Examination Report on 2 nd August 2011. In the said
Report, certain queries were raised, giving an opportunity to the petitioner to put forth his
objections. Accordingly, the petitioner put forth his objections by a communication dated 6 th
August 2011 followed by further communication dated 9 th August 2011, which was received
by the Patent Office on 10th August 2011 and the seal was also affixed on the said
communication. 24 Once again, another Examination Report (Third one) dated 13th October
2011 was issued by the Controller. On a perusal of the said Report, it is seen that the
objections pointed out in the said Report were new set of objections, which did not find place
in the Examination Report dated 2 nd August 2011. On receipt of the same, the petitioner put
forth his submissions vide reply dated 13th December 2011, which also contained an
annexure. Thereafter, the impugned proceeding has been passed by the fourth respondent on
09th March 2012. Submission of the counsel appearing for the petitioner was that the
application could not have been rejected on the ground of abandonment under Section 21(1)
of the Act, especially, when the Examination Reports dated 02nd August 2011 and 13th

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October 2011 contained two sets of fresh objections and not the same objections and
therefore, the petitioner's application could not have been rejected as abandoned.

HELD: The Honble Judge remanded the matter to the Controller for a fresh consideration
and for passing a reasoned order under Section 15 of the Act as expeditiously as possible.
The court directed that petitioner shall be given an opportunity of personal hearing before
passing an order for refusal of Patent.

laintiff Bristol-Myers Squibb Company & Ors


versus Defendants Mr J.D. Joshi & MJ Chempharm
Private Limited (BDR Lifesciences Pvt. Ltd.) Mr. D.
Shah & Anr.(2013)
HELD: Challenge on Utility grounds under Section 64(1) g at ad interim stage It is argued
that Markush Claims lists billions of compounds and leaves the utility or evidence of
usefulness to the imagination of a person skilled in the art. There was not a single sentence
or whisper as to how the billions of compounds claimed in claim 1 or other claims were
useful for treatment of blood cancer or leukaemia. The Judge however said that challenge as
to utility is such which cannot be by mere asking of the defendants be assumed to be raising a
doubt as to the validity of the patent till the time answers to relevant concerns/questions are
provided during the trial. Therefore, the Judge said, I prima facie do not find the plea of the
lack of utility as convincing to raise any credible challenge to the validity of the suit patent
though it may be a defence, which is yet to be substantiated with more facts during the course
of the trial.

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Petitioner The Delhi Network of Positive People Vs.


Respondent Union of India & Ors.
Petitioner filed Public Interest Litigation (PIL), to secure the rights of persons living with
HIV/AIDS, pleading practice adopted by pharmaceutical companies to keep the patent
applications pending i.e. of filing a divisional patent application based on an earlier filed
patent application this helps keep a patent application over a particular medicine alive and
creates uncertainty over the patent status of the medicines; such uncertainty is against public
interest. Petitioner said Pharma Companies are misusing the system of filing divisional
application with claim which are identical to the claims of the parent application; petition
sought: (a) a direction to the respondent no.1 Ministry of Industry and Commerce to prevent
abuse of process in filing of divisional patent applications, including by amending Form-I of
the Patents Act, to require a declaration from the patent applicant at the time of filing such
divisional application that the parent application discloses multiple inventions not
constituting one single inventive concept and that the claims of the divisional applications are
not identical to that of the parent applications; (b) a prohibition against the respondent no.2
Controller General of Patents and respondent no.3 Joint Controller of Patents & Designs from
proceeding with examining and processing divisional patent applications on merits until 31
the existence of jurisdictional fact and their maintainability as divisional patent applications
are first determined; (c) a direction to the respondent no.2 Controller General of Patents to
reject in line all divisional applications with claims identical to that of the parent applications,
without hearing the applicant on substantive issues of patentability; (d) a direction to the
respondent no.2 Controller General of Patents to identify patent applicants who have abused
the process and take action against them; and, (e) a direction to the respondent no.2
Controller General of Patents and respondent no.3 Joint Controller of Patents & Designs to
ensure that in every patent application there is an undertaking that there is no other
application filed in respect of the same inventive concept and in the event of the divisional
applications to decide without issuing notice whether claim is related to same inventive
concept and if so, to reject such an application

HELD: The bench held that in exercise of powers of judicial review, the court cannot
legislate or even give direction to legislate. Though Section 158 empowers the High Courts
also to make rules but only as to the conduct and procedure in respect of proceedings before

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it under the Act and not in respect of proceedings before the Patent Office. Moreover, the
bench said that petitioner has sought the relief in vacuum, without reference to any particular
divisional application filed in abuse of Section 16 of the Act. Though instances of two such
abuses have been given but the patent applicant who had indulged in such abuse has not been
made a party to the petition. It is the settled principle that the Court cannot be approached in
vacuum, without a cause of action. the circumstances, though the bench found considerable
merit in the grievance urged by the petitioner as well as in the suggestions made to allay the
same, but found hands to be tied and accordingly disposed petition with a direction to the
respondents to, within a period of six months, treating the writ petition as a representation,
take a decision whether any further amendment in the Patents Rules is necessary to address
the malady if any and if so, to take appropriate steps therefor.

Apellant Darius Rutton Kavasmaneck Vs.


Respondent Gharda Chemicals, Keki Hormusji
Gharda & Others
The suit was filed for derivative action by the appellant- plaintiff as minority shareholder.
The plaintiff's grievance, in brief, was defendant No.2 (Dr. Gharda) who had obtained several
patents in his own name whereas the patents ought to have been applied and obtained in the
name of defendant No.1 (Gharda Chemicals Limited). Appellant asserted that the defendant
No.2 has been using the infrastructure facilities and investment made by the company in the
research and development department to carry out research invent. Defendant No.2 was a
full-time Managing Director and in employment of defendant No.1. Appellant said Defendant
No.2 has used the Research and Development department and laboratory of the company for
doing research. The invention, if at all made by defendant No.2, was made in the laboratory
of defendant No.1 and not in his mind. It was contended by the respondent that in the
capacity of Managing Director, it was not the duty of defendant No.2 to invent. There was, 33
therefore, no fiduciary duty cast on defendant No.2 to register the patents in favour of
defendant No.1. The last contract clarifies that he is the owner of all the inventions that he
had devised. The said contract has been approved by the shareholders of the company in
general meeting by a requisite majority as well as approved by the Central Government. It

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was alleged by the Appellant that defendant No.2 is likely to transfer the patents in the name
of company i.e. GMATF (holding 57% shares of defendant No.1- Company). The court held
that the plaintiff's/Appellants case for interim relief is based on apprehension. . We are of
the prima facie view that whatever serious apprehension the plaintiff may have, cannot be a
ground to grant relief in favour of the plaintiff considering the serious consequences of the
same. In the facts of the case and considering the record and submissions advanced, we are
not convinced to hold that the balance of convenience lies in favour of the appellant i.e.
original plaintiff. Judge dismissed the appeal by rejecting the prayer for grant of interim
injunction in view of facts and circumstances

HELD: The court observed that plaintiff has an alternate efficacious remedy before
specialized forum i.e. Controller of Patents. The plaintiff could have initiated proceeding for
pre-grant of patents under section 25(1)(a) of the Patents Act or could have resorted to
proceeding by filing petition/application under section 64(1)(a)(b) of the said Act. The Court
also observed that subject patents were registered since the year 2008 onwards. So far
nothing is placed on record which would fairly indicate that defendant No.2 is selling,
transferring or in any way creating third party interest in respect of patents registered in his
name. This is apart from the question as to whom the patents belong to. There has not been
any assignment of the patents by defendant No.2 in favour of defendant No.1. So prima facie
material and evidence on record show that the patents are registered in the name of defendant
No.2 and the plaintiff has failed to make out a case that defendant No.2 is going to sell or
transfer or create third party interest in respect of subject patents or act in such a manner that
would jeopardize the interest of the company.

Merck Sharp and Dohme Corporation and Anr. Vs.


Respondent Glenmark Pharmaceuticals
The appellant Merck Sharp & Dohme (hereafter MSD) was aggrieved by the dismissal
of its application for an ad interim injunction restraining the respondent/defendant Glenmark
Pharmaceuticals for selling Sitagliptin phosphate monohydrate salt covered by their Patent
IN209816. By the order dated 2 nd April/5th April 2013, learned Single Judge in paragraph
22 was of the opinion that a minor variation in the combination in Glenmarks product

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(phosphate with Sitagliptin) could not mean that there was no infringement; trifling variations
had to be ignored. However, he went on to notice that MSD, as patentee of Sitagliptin was
not marketing Sitagliptin alone as a product and was marketing Sitagliptin in combination
with phosphate, just like Glenmark. Nevertheless, he noticed that interim relief and the
pleadings did not suggest that Sitagliptin Phosphate made by Glenmark was with the same
object as MSDs patent; equally he noted that 35 there was no pleading that the mere addition
of phosphate to Sitagliptin did not embody an inventive advancement. The impugned
judgement, therefore, concluded that the plaintiff did not prove the case it ought to have i.e.
how Sitagliptin Phosphate is merely a new form of Sitagliptin that was medically equivalent
to Sitagliptin, thus rendering the interim injunction unwarranted. MSD argued that the suit
patent is infringed because Sitagliptin and any of its acceptable salts are covered by its
claims, thus resulting in the making, using or offering for sale, importing into India etc. of
Sitagliptin or any of its salts or any form amounting to infringement of the suit patent. patent
is for Process for the preparation of R. Sitagliptin and its pharmaceutical salts. MSDs
counsel placed reliance on Glenmarks US Process Patent No. US8334385 which clearly
admits that Sitagliptin is developed for the treatment of T2DM and is the active free base. It
also gives the full description of the process for preparing Sitagliptin freebase in the patent
specification which is Scheme 6 in Mercks patent; reliance is placed on MSDs US patent
for Sitagliptin in support. It was stressed that Glenmarks ZITA (Sitagliptin Phosphate
Monohydrate) and ZITA-MET (Sitagliptin Phosphate Monohydrate and Metformin) infringe
the suit patent because Sitagliptin is made and used by Glenmark in ZITA and ZITA-MET
when it makes salt Sitagliptin Phosphate Monohydrate. It is underlined that the phosphoric
acid salt of Sitagliptin was disclosed in the suit patent itself as one of the pharmaceutically
acceptable salts. Glenmarks Counsel, Dr. A.M. Singhvi states that ZITA has Sitagliptin
Phosphate Monohydrate as the active pharmaceutical ingredient for which no patent
protection exists because Application No. 5948/DELNP/2005 was specifically abandoned. It
was also argued that ZETAMET is a combination of Sitagliptin Phosphate and monohydrate
and Metformin Hydrochloride which is not subject matter of any patent and application No.
2710/CHENP/2008 is awaiting examination before the Patent office.

HELD: Accordingly, for the above reasons, this Court held that the order of the learned
Single Judge dismissing the application for grant of an interim injunction is liable to be and is
set aside. The interim injunction claimed for by the plaintiff MSD in IA 5167/2013 is
granted. Additionally, the following directions were issued: i) MSD shall furnish an affidavit

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undertaking (to be filed by its director duly authorised by its Board of Directors) in the
pending suit, that in the event the suit is dismissed, it would compensate Glenmark

Plaintiff Telefonaktiebolaget LM Ericsson Vs.


Defendant Intex Technologies (India) Limited
The plaintiff - Ericsson had filed the suit for permanent injunction restraining infringement of
rights in eight patents registered in India along with damages/rendition of accounts and
delivery up etc. against Intex Technologies. Ericsson argued that 8 granted patents are
Standard Essential Patents (SEPs) and any device (Mobile, Handset and Tablet) that
incorporates these features of AMR, EDGE or 3G automatically infringes upon its suit
patents. In support of its case Plaintiff said that suit patents (related to AMR, EDGE and 3G
technologies) correspond to the standards issued by ETSI related to the aforesaid 2G and 3G
technologies. The Department of Telecommunications, India has recognized ETSI standards
as approved standards for GSM, WCDMA/ UMTS network and equipment providers and as a
consequence the same are required to be complied with by various device importers,
manufacturers, sellers etc. It is apparent from a bare perusal of the Unified Access Services
License Agreement. Every telecom service provider in India has to enter into a UASL
agreement with the Government.

HELD: Court said, from the entire gamut of the matter, it appears to the Court that the suit
patents are valid, they are corresponding patents in other countries. The defendant has
infringed the same. Unless the suit patents are declared as invalid in revocation petitions filed
by the defendant, the same cannot be allowed to be infringed by the defendant who is also
unwilling to execute a FRAND licence. For the aforesaid reasons, the Court is of the
considered opinion that the defendant has prima facie acted in bad faith during the
negotiations with plaintiff, it has even approached various fora and has made contrary
statements in order to get monetary benefit. Ericsson was granted an injunction against Intex
for any devices that infringed on the eight Standard Essential Patents that are part of
Ericssons portfolio. The Court also ordered Intex to pay 50% Royalty, to be calculated as per
43 Micromax Order in in CS(OS) No.442/2013 (0.8%-1.0% of net selling price to be
escalated up to 1.3% during pendency of the trial) from date of filing of suit till 1st March,

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2015 within four weeks. For the remaining 50% amount, court asked the defendant to furnish
the bank guarantee within the same period with the Registrar General of this Court who
would invest the said amount in FDR.

Plaintiff Symed Labs Ltd Vs. Defendant Glenmark


Pharmaceuticals Ltd. and Anr.
Plaintiff seeks an ad interim injunction restraining the Defendants, their agents, etc. from
manufacturing, selling, offering for sale, advertising or directly or indirectly dealing in the
product Linezolid manufactured in a manner so as to result in infringement of the Plaintiffs
registered patent IN213062 (IN 062) and the registered patent IN213063 (IN 063). It is
urged that novel intermediate compounds claimed in the suit patents are exclusively formed/
generated and used in the processes for the production of Linezolid as claimed in the suit
patents whereas those intermediates are not formed (indeed, there is no possibility of them
forming) in the prior art processes for preparing Linezolid. Thus, the presence of any of the
aforesaid compounds in the final product (Linezolid) would be indicative of the fact that the
said product has been prepared by using the patented processes of the Plaintiff. Defendants
have contested the suit by way of filing a written statement to the plaint and reply to the
injunction application stating that the processes as well as the intermediates claimed in the
suit patents are not the novel. It is claimed that the suit filed by the Plaintiff and the prayer

of ad interim injunction is misconceived as mere presence of Zodiac-4 and PHPFMA in the


final product of the Defendants cannot be indicative of infringement of the Plaintiffs patents
as these compounds can be found even if other processes of prior art are followed for
manufacturing Linezolid.

HELD:

Court granted an ad interim injunction restraining the Defendants in the production of


Linezolid manufactured in a manner so as to result in infringement of the Plaintiffs
registered Patents IN 063 and IN 062 till the disposal of the suit.

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Plaintiff Novartis Ag & Anr Vs. Defendant Cipla


Lt(2014)
The plaintiffs have filed a suit for permanent injunction restraining infringement of Patent no.
222346. The INDACATEROL (International NonProprietary Name), the new chemical entity
and compound, as well as its maleate salt, namely INDACATEROL Maleate in which
INDACATEROL is the active moiety, are both protected. The case of the defendant in reply
is that the plaintiff No. 1 has failed to make the product available to the patient population in
India. The imports, if any, by the Plaintiff No. 1, directly or through its licensees. It is
suggested by the defendant that the Defendant may be put to terms for depositing of a royalty
rate i.e. a percentage of its sales in the court subject to the trial of the suit. The defendant has
also referred the decision of Bombay High Court wherein it was held that importation can
only constitute working provided sufficient justification is provided. In the said attendant
circumstances, wherein the prior arts are unexplained and the defendant is taking inconsistent
position and also goes on to state that the product under patent which is INDACATEROL
Maleate is highly efficacious in curing the COPD and thus desirable by the defendant 48
when the defendant is itself making the other drugs for curing COPD which according to the
defendants own saying are not adequate (which stand is required to be tested before the
relevant forum.), it can be said that the plaintiff is able to establish a case of prima facie valid
patent on record. It is settled law that an interim injunction may be granted if the defendant
has applied for a compulsory licence but he infringes the patent during a period when his
application is still pending. It is also settled law that an injunction may be granted in respect
of a single claim even though other claims in the specification are not prima facie valid. The
Defendant cannot be permitted to infringe the patent unless the approval of the Controller for
seeking compulsory licence. As far as reasonable price of the drug in question is concerned,
there is National Pharmaceutical Pricing Authority, an organization of the Ministry of
Chemicals & Fertilizers, Government of India established inter alia to fix / revise the prices
of controlled bulk drugs and formulations and to enforce prices and availability of medicines
in the country under Drugs (Prices Control) Order issued from time to time. The defendant is
restrained by in directly or indirectly dealing in Active Pharmaceutical Ingredient (API),

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pharmaceutical products, compound or formulation containing INDACATEROL, specifically


its Maleate salt, as may amount to infringement of Indian Patent No.222346 of the
Plaintiff No.1 until the determination of the pleas raised by the defendant for seeking the
compulsory licensing if so filed shall be determined on merit and after hearing of parties in
favour of defendant, otherwise, it would continue during the pendency of the suit. If such an
application is filed by the defendant, under those circumstances, the directions are issued to
the controller or to the relevant authority to decide the application for seeking compulsory
licensing within the period of six months from the date of filing the application within two
weeks from the pronouncement of the order.

1. Whether to Make in India for Satisfying the working requirement It is not essential
that the patent must be worked by manufacturing the patented product in India. The
Act does not mandate that no patent protection would be granted to a patentee unless
the local manufacture is undertaken. 49 It is clear that the grounds which are available
for the person interested while seeking an application for the compulsory licensing or
revocation of the patent on the ground of non-working of the patent could be urged
before the relevant authority which will consider the matter and cannot be imported as
a matter of defence to the suit for infringement as the civil court hearing the suit for
infringement cannot transgress within the domain of the authority/ controller/ central
government which are distinct functionaries having their powers and considerations
specifically defined under the specific provisions of the Act. 2. Public Interest Unless
there is a credible challenge to the validity of the patent itself, the Courts will not
include any alleged public interest as a factor to exercise discretion. Therefore, to say
that public interest is a complete exception to the patent would not be correct as
otherwise the rights granted by the sovereign towards monopoly would be
undermined by too broadly interpreting the public interest. The ground of public
interest can be invoked once the court finds that damages is adequate relief which has
been held in the line of authorities emerging from US where the courts have imposed
heavy sums upon the defendants towards permitting the usage of patents. The public
interest doctrine guidesthe cases of the patents as well especially in the cases wherein
the innovations involve the lifesaving drugs or pharmaceutical preparations which
would have bearing upon the life of the general public in the disputes involving the
making of the lifesaving drugs affecting the lives of the larger segment of the public.
The reason is very simple and plain which is that the manmade inventions cannot be

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said to be taking precedence over the life of the mankind. Therefore, some mechanism
is devised by the courts so that the rights of the patentee is respected and
simultaneously the public interests is equally not affected by balancing out the two
militating interests. Thus, the balanced approach is adopted by the courts by
imposition of the terms in the form of royalty to be paid by the third party to the
patentee than to absolutely prevent the making of the patented product in the form of
injunction where the disputed question of facts arise as to whether the invention is
adequately worked in the country or not or where there exists a link between the
patented product and the far reaching effect of the medicines upon the public health
and wellbeing of the public of the country in a case of such nature is made by the
defendant. 3. Public Interest Doctrine in USA 50 The public interest doctrine has been
invoked by the US courts number of times in the cases involving the patent
infringement including but not limited to pharmaceutical disputes involving the
lifesaving drugs. One of the cases which was decided by the US Supreme Court is the
case of eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 389 (2006) which is
relating to business method patents. The Court established that a plaintiff must
demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available
at law, such as monetary damages, are inadequate to compensate for that injury; (3)
that, considering the balance of hardships between the plaintiff and defendant, a
remedy in equity is warranted; and (4) that the public interest would not be disserved
by a permanent injunction. The US Court remanded the matter before the district
court for reconsideration and thereafter the District Court again after hearing the
matter came to the conclusion that the public interests favour against the grant of the
injunction. This element of the 4th factor of public interests evolved by the US Court
which in my opinion was always present on weighing the case of the parties on the
balance of convenience became the point of larger debate in US and across the globe
in relation to decision in patent matters of diverse nature

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CONCLUSIONS AND SUGGESTIONS


conclusion
The current debate over patent protection tends to concentrate on the role of patent as an
instrument of economic policy and development. The economical, social and cultural
development of nations and societies now depend more on intellectual resources rather than
materials or natural resources. It appears that today economic development and social
progress are built around control over intellectual property rather than material wealth. The
result was more and more emphasis on legal protection to intellectual property and the
consequence was the competition among individuals and the nations to acquire more and
more intellectual properties. The patent, one among the several intellectual properties
recognised worldwide, form the most important element of economic development of
individuals as well as States. Since time immemorial, some form of protection legal or
otherwise, has been recognised in respect of inventions made by individuals on the basis of
the utility or usefulness to the society at large. Now, the basic idea underlying legal
protection of patent for inventions is the fact that with the help of such inventions it is
possible to produce goods and services that are useful to the society and its economic
development. During the course of time, various justifications for legal protection have
emerged. Thus, individual and public justifications have played prominent roles in the
arguments in favour of patent for inventions and other kinds of intellectual property rights. At
various periods, the idea of patent as an instrument of justice to the inventor has been
advanced and rewarding inventive ingenuity seems to underlie the legal protection of patents.
However, every inventor may not benefited, but the protection in the form of a monopoly
over an invention enable the inventor to get the economic benefits. As against market
monopoly, it has been argued that there are other methods of rewarding inventive ingenuity.
At times, patents are justified on the ground that it acts as an information system whereby an
invention can be used by the society for economic development as it encourages industrial
growth in the economic system. The patent law to develop from royal grants in the form of
exclusive privileges to a regular system of law took several years. It evolved in England as a
form of royal grant in the form of letters patent conferring rights on individuals to practice
trade and in 1311a Flemish weaver was granted rights through letters patent to practice his
trade in England.1 Thereafter, patents emerged as an exception to the rule against monopoly

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since the court question the grant of monopoly. Thus, Section 6 of the Statute of Monopolies,
1624 allowed the grant of monopolies for the term of 14 years or under, hereafter to be made
of the sole working or making of any manner of new manufactures within this realm to the
true and first inventor and inventors of such manufacturers.2 Despite the Statute of
Monopolies, the Crown continued to grant objectionable monopolies, which was
discontinued after 1689. The Industrial Revolution in Britain brought significant changes in
the law relating to patents. The need to provide every inventor with an incentive to continue
expanding his creative energies in producing inventions suddenly gained centre stage and
every invention, however insignificant was given due recognition. The industrial revolution
enhanced the scope of patent protection throughout the Europe. Italy for the first time,
accorded statutory patent protection for new and ingenious devices for a period of 10 years
depending upon the usefulness, but failed to accord property rights over such devices. In
France, King Louis the XIV started granting patent protections under edict of Nantes.3 It was
in 1762, statutory protection for a period of 16 years was granted to the inventions and by
1791, a simple registration rights was introduced. The same system prevailed throughout the
Europe till 1883 Paris Convention on Industrial Property. Till the time of independence, US
followed the common law principles in respect of patent protection and while enacting the
constitution, James Medicine, advocated for constitution protection for patents and other
intellectual properties. The US constitution is the foundation of federal patent law and Article
1, Section 8(8) of the constitution provides the congress shall have power to make laws to
promote the progress of science and useful arts by securing for limited time to authors and
inventors, the exclusive right

to their respective writings and discoveries.4 This provision created an encouragement


wherein patents and other intellectual property rights can get adequate protection to promote
industrial revolution. Thus, in 1790, US Patents Act was passed wherein the Secretary of
State was empowered to grant patents for a term of 14 years for inventions that are
sufficiently useful and important, provided an inventor submits his specification describing
the inventions. In ancient India, knowledge was considered to be the product of the society
rather than of individual creativity.5 However, individuals have claimed monopoly over what
they have invented. For example, the medicines and other things constituting what is now
called the traditional knowledge. The advent of British rule and the impact of industrial
revolution led the British Government to introduce patent protection in the form of statutory
privileges.

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Suggestions
The patent regime in India is now almost TRIPs compliant. As has been pointed

out TRIPs compliant patent regime under certain circumstances adversely affect the

interests of the developing country like India and its poor population. For the purpose of

strengthening the Indian economy, of promoting welfare of the poor population and to

develop native technology, it is believed that certain changes have to be incorporated into

the patent regime on the basis of following suggestions:

1. The provisions of the TRIPs relating to the subject matter of patents must be liberally

interpreted and thereby provide the member states certain amount of liberty in respect

of inventions for which patents may be granted. This is because to promote and

protect certain other obligations arising out of other provisions of international law

such as international human rights.

2. TRIPs agreement allows certain industrialised countries to take undue advantages of

the rules of international law, it is necessary to give powers to the members of WTO

to modify the scope of patent rights on certain grounds like public emergency.

3. To meet certain emergencies like public health, spread of epidemics, patented drugs

and medicines must be made available by the international community or enable

contracting parties to restrict or regulate monopoly enjoyed by the patent holder.

4. The TRIPs agreement directly or indirectly allows non-state entities especially

multinational companies to control the production, supply, distribution of food and

medicines which may adversely affect the interests of the developing and least

developed countries. To enable such countries certain exceptions to monopolies have

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to be introduced in respect of scope and content of patent rights.

5. Often the TRIPs agreement was justified on the ground that it encourages economic

development through technology transfer, but in reality it has become an impediment

and therefore some special provisions have to be introduced to facilitate smooth

transfer of technology from developed countries to the developing and to least

developed countries.

6. It is often claimed that multinational companies engaged in food and agricultural

sector and also the pharmaceutical sector, are not concerned with developing food

and medicines useful to the poor population. However, they were indulging in

research in such areas like teeth whitener vitamin food and the like. Hence, it is

suggested that the countries must have liberal access to patented food and medicine.

For example, certain life saving drugs and drugs used for treatment of deceases like

AIDS, Dengue, Malaria, etc.

7. One reason attributed to the ever increasing patent rights is the economic benefit

associated with patent monopoly which may often involve third world countries to

spend their resources in acquiring foreign patents. To curb this tendency domestic

regulations have to be made, which may appear to be in conflict with TRIPs.

8. It is alleged that the granting of patents to biological subject matter would increase

multinational companies control over natural resources and to prevent this it is

suggested that biological and natural substances even though modified by invented

biotechnological processes shall not be patented.

9. In order to protect the interests of the formers, it is suggested that biological products

like seeds shall not be patented unless they are produced only through novel

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biotechnological process.

10. There is a tendency to claim patent rights to certain products by slightly modifying

their natural content like vitamin enriched rice, wheat etc., only to have market

monopoly and to exploit gullible consumers. To discourage such practices the

products with high natural content shall not be patented even though the process by

virtue of which their content was modified may be given.

11. It is observed that the ever increasing patent claims to modified natural products led

to bio-piracy and therefore, it is suggested that the modified biological substances

should not be patented.

12. Patenting of modified natural products adversely affects innovations by the formers

and ordinary people and therefore the patent should not affect knowledge generated

by common man. This involves according greater protection to the traditional

knowledge of the people.

It is believed that the ongoing process of harmonization of patent law having its

virtues in developing uniform standards of patentability and patent procedures throughout

the world. Yet, it has its own limitations particularly in protecting the interests of the

developing and least developed countries. To mitigate hardships that may be caused to

such countries including India, it is asserted that the above suggestions if incorporated

would be of some benefit.

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Bibliography

GOOGLE.COM

WIKIPEDIA.COM

MANUPATRA.IN

SUPREMECOURTOFINDIA.NIC.IN

PATENT ACT 1970

DELHIHIGHCOURT.NIC.IN

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Annexure
Section 2
Definitions and interpretation
(1) In this Act, unless the context otherwise requires, -
(ac) "capable of industrial application", in relation to an invention,
means that the invention is capable of being made or used in an industry;
. (f) "exclusive licence" means a licence from a patentee which confers
on the licensee, or on the licensee and persons authorised by him, to the
exclusion of all other persons (including the patentee), any right in respect
of the patented invention, and exclusive licensee shall be construed
accordingly;
. (j) "invention" means a new product or process involving an inventive
step and capable of industrial application;
(ja) inventive step" means a feature of an invention that involves
technical advance as compared to the existing knowledge or having
economic significance or both and that makes the invention not obvious to
a person skilled in the art;
(k) "legal representative" means a person who in law represents the
estate of a deceased person;
(l) "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;
.. (t) "person interested" includes a person engaged in, or in
promoting, research in the same field as that to which the invention
relates;
(ta) "pharmaceutical substance" means any new entity involving one
or more inventive steps;

Section 3
What are not inventions
The following are not. inventions within the meaning of this Act,
(a) an invention which is frivolous or which claims anything obviously
contrary to well established natural laws;

(b) an invention the primary or intended use or commercial exploitation of


which could be contrary to public order or morality or which causes serious
prejudice to human, animal or plant life or health or to the environment;
(c) the mere discovery of a scientific principle or the formulation of an
abstract theory or discovery of any living thing or non-living substance
occurring in nature;
(d) the mere discovery of a new form of a known substance which does not
result in the enhancement of the known efficacy of that substance or the
mere discovery of any new property or new use for a known substance or
of the mere use of a known process, machine or apparatus unless such

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known process results in a new product or employs at least one new


reactant.
ExplanationFor the purposes of this clause, salts, esters, ethers,
polymorphs, metabolites, pure form, particle size, isomers, mixtures of
isomers, complexes, combinations and other derivatives of known
substance shall be considered to be the same substance, unless they differ
significantly in properties with regard to efficacy;
(e) 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;
(f) the mere arrangement or re-arrangement or duplication of known
devices each functioning independently of one another in a known way;
(g). (omitted)
(h) a method of agriculture or horticulture;
(i) any process for the medicinal, surgical, curative, prophylactic diagnostic,
therapeutic or other treatment of human beings or any process for a
similar treatment of animals to render them free of disease or to increase
their economic value or that of their products.
(j) plants and animals in whole or any part thereof other than microorganisms
but including seeds, varieties and species and essentially
biological processes for production or propagation of plants and animals;
(k) a mathematical or business method or a computer programme per se
or algorithms;
(l) a literary, dramatic, musical or artistic work or any other aesthetic
creation whatsoever including cinematographic works and television
productions;
(m) a mere scheme or rule or method of performing mental act or method
of playing game;
(o) topography of integrated circuits;
(p) an invention which in effect, is traditional knowledge or which is an
aggregation or duplication of known properties of traditionally known
component or components.
Section 8
Information and undertaking regarding foreign applications
(1) Where an applicant for a patent under this Act is prosecuting either
alone or jointly with any other person an application for a patent in any
country outside India in respect of the same or substantially the same
invention, or where to his knowledge such an application is being
prosecuted by some person through whom he claims or by some person
deriving title from him, he shall file along with his application or
subsequently within the prescribed period as the Controller may allow
(a) a statement setting out detailed particulars of such application;
and
(b) an undertaking that, up to the date of grant of patent in India,
he would keep the Controller informed in writing, from time to time, of
detailed particulars as required under clause (a) in respect of every other
application relating to the same or substantially the same invention, if any,
filed in any country outside India subsequently to the filing of the
statement referred to in the aforesaid clause, within the prescribed time.
(2) At any time after an application for patent is filed in India and till the

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grant of a patent or refusal to grant of a patent made thereon, the


Controller may also require the applicant to furnish details, as may be
prescribed, relating to the processing of the application in a country
outside India, and in that event the applicant shall furnish to the Controller
information available to him within such period as may be prescribed.
Section 15
Power of Controller to refuse or require amended applications, etc., in
certain case
Where the Controller is satisfied that the application or any specification
or any other document filed in pursuance thereof does not comply with
the requirements of this Act or of any rules made thereunder, the
Controller may refuse the application or may require the application,
specification or the other documents, as the case may be, to be amended

to his satisfaction before he proceeds with the application and refuse the
application on failure to do so.
Section 48
Rights of patentees
Subject to the other provisions contained in this Act and the conditions
specified in section 47, a patent granted under this Act shall confer upon
the patentee
(a) where the subject matter of the patent is a product, the exclusive
right to prevent third parties, who do not have his consent, from the act of
making, using, offering for sale, selling or importing for those purposes that
product in India;
(b) where the subject matter of the patent is a process, the exclusive
right to prevent third parties, who do not have his consent, from the act of
using that process, and from the act of using, offering for sale, selling or
importing for those purposes the product obtained directly by that process
in India:
Section 64
Revocation of patents
(1) Subject to the provisions contained in this Act, a patent, whether
granted before or after the commencement of this Act, may, be revoked
on a petition of any person interested or of the Central Government by the
Appellate Board or on a counter-claim in a suit for infringement of the
patent by the High Court on any of the following grounds, that is to say
(a) that the invention, so far as claimed in any claim of the complete
specification, was claimed in a valid claim of earlier priority date contained
in the complete specification of another patent granted in India;
(b) that the patent was granted on the application of a person not entitled
under the provisions of this Act to apply therefor:
(c) that the patent was obtained wrongfully in contravention of the rights
of the petitioner or any person under or through whom he claims;
(d) that the subject of any claim of the complete specification is not an
invention within the meaning of this Act;
(e) that the invention so far as claimed in any claim of the complete
specification is not new, having regard to what was publicly known or
publicly used in India before the priority date of the claim or to what was

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published in India or elsewhere in any of the, documents referred to in


section 13:
(f) that the invention so far as claimed in any claim of the complete
specification is obvious or does not involve any inventive step, having
regard to what was publicly known or publicly used in India or what was
published in India or elsewhere before the priority date of the claim:
(g) that the invention, so far as claimed in any claim of the complete
specification, is not useful;
(h) that the complete specification does not sufficiently and fairly describe
the invention and the method by which it is to be performed, that is to say,
that the description of the method or the instructions for the working of
the invention as contained in the complete specification are not by
themselves sufficient to enable a person in India possessing average skill
in, and average knowledge of, the art to which the invention relates, to
work the invention, or that it does not disclose the best method of
performing it which was known to the applicant for the patent and for
which he was entitled to claim protection;
(i) that the scope of any claim of the complete specification is not
sufficiently and clearly defined or that any claim of the complete
specification is not fairly based on the matter disclosed in the specification;
(j) that the patent was obtained on a false suggestion or representation;
(k) that the subject of any claim of the complete specification is not
patentable under this Act;
(l) that the invention so far as claimed in any claim of the complete
specification was secretly used in India, otherwise than as mentioned in
sub-section (3), before the priority date of the claim;
(m) that the applicant for the patent has failed to disclose to the Controller
the information required by section 8 or has furnished information which
in any material particular was false to his knowledge;
(n) that the applicant contravened any direction for secrecy passed under
section 35 or made or caused to be made an application for the grant of a
patent outside India in contravention of section 39;
(o) that leave to amend the complete specification under section 57 or
section 58 was obtained by fraud.
(p) that the complete specification does not disclose or wrongly mentions
the source or geographical origin of biological material used for the
invention;
(q) that the invention so far as claimed in any claim of the complete
specification was anticipated having regard to the knowledge, oral or

otherwise, available within any local or indigenous community in India or


elsewhere.
(2) For the purposes of clauses (e) and (f) of sub-section (1)
(a) no account shall be taken of personal document or secret trial or secret use.

Section-100. Power of Central Government to use inventions for purposes of Government.


(1) Notwithstanding anything contained in this Act, at any time after an application for a
patent has been filed at the patent office or a patent has been granted, the Central Government

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and any person authorised in writing by it, may use the invention for the purposes of
Government in accordance with the provisions of this Chapter. (2) Where an invention has,
before the priority date of the relevant claim of the complete specification, been duly
recorded in a document, or tested or tried, by or on behalf of the Government or a
Government undertaking, otherwise than in consequence of the communication of the
invention directly or indirectly by the patentee or by a person from whom he derives title, any
use of the invention by the Central Government or any person authorised in writing by it for
the purposes of Government may be made free of any royalty or other remuneration to the
patentee. (3) If and so far as the invention has not been so recorded or tried or tested as
aforesaid, any use of the invention made by the Central Government or any person authorised
by it under sub-section (1), at any time after grant of the patent or in consequence of any such
communication as aforesaid, shall be made upon terms as may be agreed upon either before
or after the use, between the Central Government or any person authorised under

107. Defences, etc., in suits for infringement.(1) In any suit for infringement of a patent
every ground on which it may be revoked under section 64 shall be available as a ground for
defence. (2) In any suit for infringement of a patent by the making, using or importation of
any machine, apparatus of other article or by the using of any process or by the importation,
use or distribution or any medicine or drug, it shall be a ground for defence that such making,
using, importation or distribution is in accordance with any one or more of the conditions
specified in section 47. 107A. Certain acts not to be considered as infringement.For the
purposes of this Act, (a) any act of making, constructing, using, selling or importing a
patented invention solely for uses reasonably related to the development and submission of
information required under any law for the time being in force, in India, or in a country other
than India, that regulates the manufacture, construction, use, sale or import of any product;
(b) importation of patented products by any person from a person who is duly authorised
under the law to produce and sell or distribute the product, shall not be considered as a
infringement of patent rights. 108. Reliefs in suit for infringement.(1) The reliefs which a
court may grant in any suit for infringement include an injunction (subject to such terms, if
any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of
profits. (2) The court may also order that the goods which are found to be infringing and
materials and implements, the predominant use of which is in the creation of infringing goods
shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the
case without payment of any compensation. 109. Right of exclusive licensee to take
proceedings against infringement.(1) The holder of an exclusive licence shall have the like
right as the patentee to institute a suit in respect of any infringement of the patent committed
after the date of the licence, and in awarding damages or an account of profits or granting any
other relief in any such suit the court shall take into consideration any loss suffered or likely
to be suffered by the exclusive licensee as such or, as the case may be, the profits earned by
means of the infringement so far as it constitutes an infringement of the rights of the
exclusive
115. Scientific advisers.(1) In any suit for infringement or in any proceeding before a court
under this Act, the court may at any time, and whether or not an application has been made
by any party for that purpose, appoint an independent scientific adviser, to ass ist the court or
to inquire and report upon any such question of fact or of opinion (not involving a question of
interpretation of law) as it may formulate for the purpose. (2) The remuneration of the
scientific adviser shall be fixed by the court and shall include the costs of making a report and
a proper daily fee for any day on which the scientific adviser may be required to attend before
the court, and such remuneration shall be defrayed out of moneys provided by Parliament by
law for the purpose.

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118. Contravention of secrecy provisions relating to certain inventions.If any person fails
to comply with any direction given under section 35 or makes or causes to be made an
application for the grant of a patent in contravention of section 39 he shall be punishable with
imprisonment for a' term which may extend to two years, or with fine, or with both. 119.
Falsification of entries in register, etc.If any person makes, or causes to be made, a false
entry in any register kept under this Act, or a writing falsely purporting to be a copy of an
entry in such a register, or produces or tenders, or causes to be produced or tendered, in
evidence any such writing knowing the entry or writing to be false, he sha ll be punishable
with imprisonment for a term which may extend to two years, or with fine, or with both. 120.
Unauthorised claim of patent rights.If any person falsely represents that any article sold by
him is patented in India or is the subject of an application for a patent in India, he shall be
punishable with fine which may extend to one lakh rupees . Explanation 1.For the purposes
of this section, a person shall be deemed to represent (a) that an article is patented in India
if there is stamped, engraved or impressed on, or otherwise applied to, the article the word
"patent" or "patented" or some other word expressing or implying that a patent for the article
has been obtained in India; (b) that an article is the subject of an application for a patent in
India, if there are stamped, engraved or impressed on, or otherwise applied to, the article the
words "patent applied for", "patent pending", or some other words implying that an
application for a patent for the article has been made in India.

133. Convention countries.Any country, which is a signatory or party or a group of


countries, union of countries or intergovernmental organisations which are signatories or
parties to an international, regional or bi-lateral treaty, convention or arrangement to which
India is also a signatory or party and which affords to the applicants for patents in India or to
citizens of India similar privileges as are granted to their own citizens or citizens to their
member countries in respect of the grant of patents and protection of patent rights shall be a
convention country or convention countries for the purposes of this Act. 134. Notification as
to countries not providing for reciprocity.Where any country specified by the Central
Government in this behalf by notification in the Official Gazette does not accord to citizens
of India the same rights in respect of the grant of patents and the protection of patent rights as
it accords to its own nationals, no national of such country shall be entitled, either solely or
jointly with any other person, (a) to apply for the grant of a patent or be registered as the
proprietor of a patent; (b) to be registered as the assignee of the proprietor of a patent; or (c)
to apply for a licence or hold any licence under a patent granted under this Act. 135.
Convention applications.(1) Without prejudice to the provisions contained in section 6,
where a person has made an application for a patent in respect of an invention in a convention
country (hereinafter referred to as the "basic application"), and that person or the legal
representative or assignee of that person makes an application under this Act for a patent
within twelve months after the date on which the basic application was made, the priority
date of a claim of the complete specification, being a claim based on matter disclosed in the
basic application, is the date of making of the basic application. Explanation.Where
applications have been made for similar protection in respect of an invention in two or more
convention countries, the period of twelve months
156. Patent to bind Government.Subject to the other provisions contained in this Act, a
patent shall have to all intents the like effect as against Government as it has against any
person. 157. Right of Government to sell or use forfeited articles.Nothing in this Act shall
affect the power of the Government or of any person deriving title directly or indirectly from
the Government to sell or use any articles forfeited under any law for the time being in force.
157A. Protection of security of India.Notwithstanding anything contained in this Act, the
Central Government shall (a) not disclose any information relating to any patentable

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invention or any application relating to the grant of patent under this Act, which it considers
prejudicial to the interest of security of India; (b) take any action including the revocation of
any patent which it considers necessary in the interest of the security of India by issue of a
notification in the Official Gazette to that effect. Explanation.For the purposes of this
section, the expression "security of India" includes any action necessary for the security of
India which (i) relates to fissionable materials or the materials from which they are
derived; or (ii) relates to the traffic in arms, ammunition and implements of war and to such
traffic in other goods and materials as is carried on directly or indirectly for the purpose of
supplying a military establishment; or (iii) is taken in time of war or other emergency in
international relations. 158. Power of High Courts to make rules.The High Court may
make rules consistent with this Act as
160. Rules to be placed before Parliament.Every rule made under this Act shall be laid, as
soon as may be after it is made, before each House of Parliament while it is in session for a
total period of thirty days which may be comprised in one session or in two or more
successive sessions, and if, before the expiry of the session immediately following the session
or the successive sessions aforesaid, both Houses agree in making any modification in the
rule or both Houses agree that the rule should not be made, the rule shall thereafter have
effect only in such modified form or be of no effect, as the case may be; so, however, that any
such modification or annulment shall be without prejudice to the validity of anything
previously done under that rule. 161. Special provisions with respect to certain applications
deemed to have been refused under Act 2 of 1911. [Omitted by the Patents (Amendment)
Act, 2002] 162. Repeal of Act 2 of 1911 in so far as it relates to patents and savings. (1)
The Indian Patents and Designs Act, 1911, in so far as it relates to patents, is hereby repealed,
that is to say, the said Act shall be amended in the manner specified in the Schedule. (2) and
(3) [Omitted by the Patents (Amendment) Act, 2002] (4) The mention of particular matters in
this section shall not prejudice the general application of the General Clauses Act, 1897 (10
of 1897), with respect to repeals. (5) Notwithstanding anything contained in this Act, any suit
for infringement of a patent or any proceeding for revocation of a patent, pending in any
court at the commencement of this Act, may be continued and disposed of, as if this Act had
not been passed.
60. Applications for restorations of lapsed patents.(1) Where a patent has ceased to have
effect by reason of failure to pay any renewal fee within the period prescribed under section
53 or within such period as may be allowed under sub-section (4) of section 142, the patentee
or his legal representative, and the patent was held by two or more persons jointly, then, with
the leave of the Controller, one or more of them without joining the others, may, within
eighteen months from the date on which the patent ceased to have effect, make an application
for the restoration of the patent. (2) [Omitted by the Patents (Amendment) Act, 2002] (3) An
application under this section shall contain a statement, verified in the prescribed manner,
fully setting out the circumstances which led to the failure to pay the prescribed fee, and the
Controller may require from the applicant such further evidence as he may think necessary.
61. Procedure for disposal of applications for restoration of lapsed patents.(1) If, after
hearing the applicant in cases where the Applicant so desires or the Controller thinks fit, the
Controller is prima facie satisfied that the failure to pay the renewal fee was unintentional and
that there has been no undue delay in the making of the application, he shall publish the
application in the prescribed manner; and within the prescribed period any person interested
may give notice to the Controller of opposition thereto on either or both of the following
grounds, that is to say, (a) that the failure to pay the renewal fee was not unintentional; or
(b) that there has been undue delay in the making of the application. (2) If notice of
opposition is given within the period aforesaid, the Controller shall notify the applicant, and
shall give to him and to the opponent an opportunity to be heard before he decides the case.

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(3) If no notice of opposition is given within the period aforesaid or if in the case of
opposition, the decision of the Controller is in favour of the applicant, the Controller shall,
upon payment of any unpaid renewal fee and such additional fee as may be

REPORT BY: YASH PAL SINGH, B.A.LLB / 2013-2018/ under GUIDANCE & SUPERVISION OF MS.BHAWNA SINGH