Indian Patent Law And International Conventions

 Introduction

A Patent is an exclusive right given to a person who is an inventor of a new and useful article or an improvement of an existing article or a new process of making an article. A patent refers to the grant of some privilege or exclusive right to exclude others from making, selling, or using the same product or process. It is a kind of a monopoly right granted for a limited time period during the duration of the patent, after which the invention becomes part of the public domain. The object behind granting a patent is to encourage the continuous flow of inventions. Patent systems encourage research and inventions, as, after a specified time period, the inventor discloses his discoveries, when it falls in the public domain.

Indian Patent Law And International Conventions

Evolution of Patent Law in India

In India, the first act relating to Patents Rights was the Protection of Inventions Act 1856 which was based on the British Patent Law of 1852. The Protection of Inventions Act granted exclusive privileges to inventors of new manufacturers for a period of 14 years. This Act was re-enacted and modified in 1859. Under this Act, patent monopolies, called “exclusive privileges” were granted for 14 years for making, selling, and using inventions in India from the date of filing of specification. Subsequently, the Patents and Designs Protection Act was enacted in 1872. Thereafter, the Protection of Inventions Act was enacted in 1883. These acts were later consolidated as the Inventions and Designs Act 1888. Finally, the Indian Patents and Designs Act came to be enacted in 1911. This act for the first time, established a system of patent administration under the management of the Controller of Patents. It was felt that the 1911 Act was not responding to the needs of the society and was not keeping pace with industrial development. Therefore, Tek Chand Committee was appointed to review the working of patent laws in India to ensure its national interest. The Committee submitted its final report and in 1953, the Patents Bill was introduced in Lok Sabha. However, the Bill could not become an Act. In 1957, Ayyanagar Committee was appointed by the Government to review the patent laws and advise the government on the changes required to be made in the law. The Committee submitted a comprehensive report, based on which a Patents Bill was introduced in Lok Sabha in 1965. Unfortunately, the Bill did not go ahead and lapsed. The Patents Bill was again introduced in the Parliament and this time it was passed by both the houses of the Parliament in 1970. Lastly, The Patents Act, 1970 came into force which is the present law governing the protection of Patents in India.

Patents Act, 1970 : An overview

Patentability criterion: Novelty, Inventive Step, Industrial Application and complete Written Description

For an invention to be patentable, the Patents Act requires it to be new or novel resulting in a new product or process involving an inventive step and capable of industrial application. According to Section 2(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 a patent application with complete specification, i.e., the subject matter has not fallen in the public domain or that it does not form part of the state of the art. The invention can either be a product or process, but in order to be patentable, such a product or process should be new, involve an inventive step, and capable of industrial application. Industrial application is also another important requirement, that needs to be fulfilled for an invention to be patentable. Capable of industrial application means that the invention is capable of being made or used in industry.

Indian Patent Law And International Conventions

Another important requirement is that of Inventive Step. For an invention to meet the criterion of the inventive step, the patentee must show that the invention includes technical advancement or has economic significance, or both. One of the most important cases decided by the Supreme Court that expanded the scope of the ‘inventive step’ is the case of Bishwanath Prasad Radhey Shyam versus Hindustan Metal Industries¹. In this case, the apex court held that in order to be patentable, an improvement on something known before or a combination of different matters already known should be something more than a mere workshop improvement and must independently satisfy the test of the invention or inventive step. The court observed that the invention must have an inventive step in the sense that the new article must be a better or a cheaper version of the existing one. The Court further stated that the invention must be non-obvious to a person skilled in the art to which the invention relates.

While applying for the patent, the inventor must also clearly describe the invention including complete specification of the invention indicating the title and the subject matter to which the invention relates. Section 10 of the act specifies the contents of the specification.

Section 3 and 4 of the Act prescribe a list of inventions that are not patentable. The inventions that are excluded from the scope of patentability include the discovery of scientific principles, inventions injurious to public health, methods of agriculture/horticulture, the process for the treatment of human beings, animals, or plants. Section 4 excludes inventions relating to atomic energy from the scope of patentability.

The Patent Act also prescribes the process of obtaining a patent explaining the conditions that are to be satisfied while submitting an application for a grant of patent.

Indian Patent Law And International Conventions

General procedure for obtaining a patent

  • Filing of Patent Application
  • Scrutiny by office
  • Publication of application(s) for grant of patent
  • Pre-grant opposition
  • Examination by Controller: grant or refusal
  • Publication of grant of patent
  • Post-grant opposition to grant the patent
  • Decision by controller

A patent is granted for a term of 20 years from the date of filing of the application. The patentee is also required to renew the patent every year by paying the renewal fees failing which the patent shall cease to have an effect and shall not be eligible for any protection.

Infringement of Patent

Any violation of the rights of the patentee including the right to prevent the third parties from making, using, offering for sale, selling, or importing the products in India without the consent of the patent holder, will constitute an infringement of the patent. Following acts may constitute infringement:

Indian Patent Law And International Conventions
  • The colorable imitation of an invention
  • Immaterial variations in the invention
  • Mechanical equivalent
  • Taking essential features of the invention

The remedies that a court may grant in a suit for infringement, include temporary or permanent injunction and, at the option of the plaintiff, either damages or an account of profits. The remedy of damages and account of profits are not cumulative but alternative. The court may also order that the goods which are found to be infringing and materials the predominant use of which, is in the creation of infringing goods to be seized, forfeited, or destroyed. This remedy has been included after the amendment of 2002.

International Patenting Regime

Paris Convention for Protection of Intellectual Property

The Paris Convention established in 1883 has within its purview not only patents but also trademarks, industrial designs, utility models, geographical indications, and the repression of unfair competition. As of January 2019, the Paris Convention has 177 member countries. The Paris Convention establishes a right of priority, which means that an applicant can use his or her first filing date as an effective filing date in other member countries.

The three basic principles of this convention are National Treatment, Right of Priority, and Independence of Protection. Under the provision of National Treatment, the Convention provides that with regards to the protection of intellectual property, each of the member countries must grant the same protection to nationals of other countries as given to its own nationals. The Right of Priority is provided in the case of patents, trademarks, and industrial designs. This right means that, after filing the first application in one of the member countries, the applicant has 12 months’ time to file an application for a patent in other member countries. ‘Independence of Protection’ means that the grant of a patent cannot be refused in other countries if refused or terminated in one member country.

Indian Patent Law And International Conventions

Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) came into force in 1978 as an agreement for international cooperation in the field of patents. It helps applicants in filing applications for patent protection internationally for their inventions. Under the PCT, the applicant may file the application with the national patent office of the country of which he is a resident, or he may file in the WIPO, complying with the PCT requirements. The applicant under the PCT route has the advantage of filing one single application in accordance with the PCT that is valid for all the countries. As of October 2019, the PCT has 153 contracting states. India became a member of the PCT on 7th December 1998.

Indian Patent Law And International Conventions

TRIPS has within its purview trademarks, geographical indications, industrial designs, patents, layout designs of integrated circuits, and trade secrets. TRIPS agreement came into force in 1995 and is an integral part of the WTO (World Trade Organisation) Agreement. It is ipso-facto binding on all members of WTO. i.e. a country cannot be a member of WTO without being a party to the TRIPS Agreement. The TRIPS agreement has specific provisions on duration, coverage, and criterion of patentability. TRIPS requires a patent to be of a term of 20 years from the date of filing of the patent application. The key features of this agreement are general principles, enforcement of intellectual property rights, and dispute settlement. General principles refer to the principles of the most favored nation and national treatment. The agreement also provides mechanisms to prevent infringement of intellectual property rights under the law enforcement procedure.

Conclusion

In the world of innovations, patenting the invention is necessary to safeguard one’s invention. Not only does it give the inventor exclusive rights, to exploit his invention commercially for a particular period of time, but also helps the inventor in covering the huge costs incurred in the research and development of the invention.

References:

https://indiankanoon.org/doc/1905157/

Law relating to Intellectual Property by Dr. B.L. Wadhera (5th Edi)

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